WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Porsche AG v. Glenn Stefan Karlsson-Springare
Case No. D2011-1727
1. The Parties
The Complainant is F. Porsche AG of Stuttgart, Germany, represented by Lichtenstein, Körner & Partners, Germany.
The Respondent is Glenn Stefan Karlsson-Springare of Huddinge, Sweden.
2. The Domain Names and Registrar
The disputed domain names: <porsche-concept.com>; <porscheconcept.com>; <porsche-environment.com>; and <porscheenvironment.com> are registered with eNom, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 12, 2011. On October 12, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 12, 2011, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact for the disputed domain names. 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 October 19, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 9, 2011. The Response was filed with the Center on November 13, 2011.
The Center appointed Debrett G. Lyons as the sole panelist in this matter on November 17, 2011. 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 facts relevant to the Findings and Decision in this case are that:
The Complainant is a well known manufacturer of high performance motor vehicles.
The Respondent’s business is unknown.
The disputed domain names are parked.
There has been no commercial or other relationship between the parties.
The disputed domain name <porscheconcept.com> was registered on March 26, 2010.
In pre-Complaint correspondence between the parties in September 2011, the Respondent asked for USD 50,000.00 in exchange for the domain name <porscheconcept.com>.
On October 3, 2011, the remaining three disputed domain names were registered by the Respondent.
The Complainant petitions the Panel to order transfer of the disputed domain names from the Respondent to the Complainant.
5. Parties’ Contentions
The Complainant asserts trade mark rights in PORSCHE and alleges that the disputed domain names are confusingly similar to the trade mark.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain names.
The Complainant alleges that the Respondent registered and used the disputed domain names in bad faith.
A preliminary issue for the Panel to decide is whether the out-of-time Response should be taken into account in reaching the Decision.
Whilst that determination is entirely at the Panel’s discretion, former panelists have regarded as influential matters such as the reasons for the late response and the character of the response.
In this case, the due date for Response was November 9, 2011. On November 10, 2011 the Center notified the Respondent of its default. On November 13, 2011, the Respondent reacted and wrote to the Center apologizing for the overdue Response, stating that he had not received notification of the Complaint “or I have managed to clean it out of my inbox by mistake”. That same message then went on to respond to the allegations of the Complainant in a perfunctory manner. The Center responded by advising the Respondent that it would be at the sole discretion of the Panel whether those submissions were considered. On November 15, 2011, the Center sent a subsequent communication noting that the “Complaint and Commencement of Administrative Proceeding sent on October 9, 2011, was inadvertently not copied to the email address firstname.lastname@example.org. Therefore, in accordance with the Rules, paragraph 2(j) the Center will accept the below communication as being timely filed and the Notification of Respondent Default disregarded.”
However, the Panel finds that the Center has provided the Panel with evidence which shows that the Complaint was successfully communicated to the Respondent via its Registrar-confirmed email address and that the Written Notice was successfully delivered to the Respondent by courier. The deadline for a Response was clearly indicated in the Notification of the Complaint and the Panel finds that the reason given by the Respondent to excuse the failure to comply with the due date shows a casual indifference to the Administrative Proceedings to which it had become a party. Moreover, the late submissions made by the Respondent pay little or no regard to the Policy and what must be shown. They do not address the allegations of the Complaint in any compelling manner and are, in general, simply a self-affirmation that the Respondent has done no wrong. As such, regardless of whether the Response was to be considered timely or not, its admission would not turn the case.
The Panel finds that in this case there is nothing to cause it to exercise its discretion in favour of the Respondent by way of admitting the out-of-time Response to the record.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant must prove, in each case, that:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Having considered the Complaint and the accompanying evidence, the Panel makes the following findings.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trade mark, followed by an assessment of whether the disputed domain names are identical or confusingly similar to the trade mark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trade mark rights. It is accepted that a trade mark registered with a national authority is prima facie evidence of trade mark rights for the purposes of the Policy1. The Panel finds that the Complainant has rights in the trade mark PORSCHE by reason of a large international portfolio of trade mark registrations for that word.
The remaining question is whether the disputed domain names are confusingly similar to the PORSCHE trade mark. For the purposes of testing confusing similarity, the generic top-level domain “.com” can be ignored.2 The disputed domain names then differ from the trade mark by the addition of either descriptive or non-distinctive words. Countless earlier decisions under this Policy have held that the addition of a non-distinctive integer to a trade mark does little or nothing to avoid confusion.
The Panel finds that the disputed domain names are confusingly similar to the Complainant’s trade mark and so finds that the Complainant has satisfied the first limb of the Policy in respect of each disputed domain name.
B. Rights or Legitimate Interests
The Complainant has the burden to establish that the Respondent has no rights or legitimate interests in the disputed domain names. Nevertheless, it is well-settled that the Complainant need only make out a prima facie case, after which the onus shifts to the Respondent to rebut such prima facie case by demonstrating rights or legitimate interests3.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
“(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 noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.”
The publicly available WhoIs information does not support any conclusion that the Respondent might be commonly known by any of the disputed domain names. There is no evidence that the Respondent has trade mark rights in the disputed domain names, registered or not. The Respondent has not provided any evidence that it used the disputed domain names in connection with a bona fide offering of goods or services prior to notice of the dispute. There has been no relationship between the parties.
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, which was not rebutted by the Respondent.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names and therefore the Complainant has satisfied the second element of the Policy in respect of each disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out circumstances which shall be evidence of the registration and use of a domain name in bad faith. They are:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(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.”
The Panel finds that the Respondent’s actions fall squarely under paragraph 4(b)(i) of the Policy. There is no evidence of good faith use of the disputed domain names. There is no evidence that the Respondent might be engaged in a business whereby it could show a legitimate interest in the domain names. Although the Complainant initiated contact with the Respondent, the Respondent reacted with an offer to sell the first registered disputed domain name for what the Panel finds to be an extortionate sum of money. It then compounded its bad faith intention by registering, a few days later, three more disputed domain names and then offered for sale all of those names to the Complainant.
The Panel finds that the domain names were registered and used 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 disputed domain names, <porsche-concept.com>, <porscheconcept.com>, <porsche-environment.com> and <porscheenvironment.com> be transferred to the Complainant.
Debrett G. Lyons
Dated: November 20, 2011
1 See State Farm Mutual Automobile Insurance Company v. Periasami Malain, NAF Claim No. FA705262 (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, NAF Claim No. FA174052 (finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).
2 See Gardline Surveys Ltd v. Domain Finance Ltd., NAF Claim No. FA153545 (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
3 See, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, NAF Claim No. FA741828; AOL LLC v. Jordan Gerberg, NAF Claim No. FA780200.