WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dr. Ing. h.c. F. Porsche AG v. Private Whois porscha.com c/o porscha.com
Case No. D2011-1780
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 Private Whois porscha.com c/o porscha.com of Nassau, Bahamas, Overseas territory of the United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).
2. The Domain Name and Registrar
The disputed domain name <porscha.com> is registered with Internet.bs Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 19, 2011. On October 20, 2011, the Center transmitted by email to Internet.bs Corp. a request for registrar verification in connection with the disputed domain name. On October 26, 2011, Internet.bs Corp. 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” 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 27, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 16, 2011. On October 31, 2011, the Center extended the due date for Response to November 20, 2011, due to exceptional circumstances. On November 21, 2011, the Center sent an email communication to the Parties and extended the due date for Response, or the indication from the Respondent that it intends to submit any Response, to November 26, 2011. The Respondent did not submit any response. The Center notified the Parties of the commencement of the panel appointment process on November 28, 2011.
The Center appointed Fabrizio La Spada as the sole panelist in this matter on December 2, 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 Complainant is an automobile maker.
The Complainant is the owner of numerous trademarks, registered throughout the world, consisting of or containing the word "Porsche", including in particular (among many others) United States Trademark Registration No. 0618933 (PORSCHE), registered on January 10, 1956 for automobiles and parts thereof and International Trademark Registration No. 179928, registered on October 8, 1954. The Complainant’s trademark is well known throughout the world.
The Complainant operates its website at “www.porsche.com”.
The Respondent registered the disputed domain name on December 19, 2003. The dispute domain name resolves to a pay-per-click website, which sets out links to third-party websites, including websites where products and services competing with those of the Complainant are offered.
5. Parties’ Contentions
Concerning the first test under the Policy, the Complainant considers that the disputed domain name is confusingly similar to its PORSCHE trademark, which it embodies almost identically, thus profiting from misspellings by Internet users. According to the Complainant, such misspellings are even more likely since “porscha” is a popular pronunciation of the word “porsche” in English-speaking countries.
Concerning the second test under the policy, the Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name. In this respect, the Complainant contends that the Respondent has not used or made preparations to use the disputed domain name with a bone fide offering of goods or services; that there is not and has never been a business relationship between the parties; that the Respondent is not commonly known by the disputed domain name; and that the Respondent is not making non commercial use of the disputed domain name.
Finally, concerning the third test under the Policy, the Complainant argues that the Respondent has registered and uses the disputed domain name in bad faith. According to the Complainant, under no conceivable circumstances the Respondent could have acted in good faith and the latter has no legitimate interests in registering and using a domain name which so closely resembles a well-know and prestigious trademark. In addition, the Complainant contends that the Respondent’s intention to use the disputed domain name to mislead Internet users in order to confront them with commercial content not provided by the Complainant is confirmed by the use the Respondent has made of the disputed domain name, namely that of a parking website.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in these proceedings and obtain the transfer of the disputed domain name, the Complainant must prove that each of the three following elements is satisfied:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section A); and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name (see below, section B); and
(iii) The disputed domain name has been registered and is being used in bad faith (see below, section C).
Under paragraph 4(a) of the Policy, the burden of proof with regard to these elements lies with the Complainant.
A. Identical or Confusingly Similar
This question raises two issues: (1) does the Complainant have rights in a trademark or service mark; and (2) is the disputed domain name identical or confusingly similar to such trademark or service mark.
As regards the first issue, the Complainant has provided documentary evidence that it is the owner of several trademarks consisting of the word “Porsche”.
Concerning the second issue, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s PORSCHE trademark. The disputed domain name incorporates the entirety of the Complainant’s trademark, with only one minor and non distinctive difference: the replacement of the final letter “e” with the letter “a”. Such insignificant modifications to trademarks are commonly referred to as “typosquatting” or “typo-piracy”, as such conduct seeks to wrongfully take advantage of errors by users in typing domain names into their web browser’s location bar (see Express Scripts, Inc. v. Whois Privacy Protection Service, Inc. / Domaindeals, Domain Administrator, WIPO Case No. D2008-1302 and cases cited therein). In the present case, the confusion is even increased by the fact that, as the evidence produced by the Complainant demonstrates, “porscha” is a common pronunciation of the Complainant’s trademark PORSCHE in English-speaking countries.
In view of the foregoing, the Panel finds that the disputed domain name <porscha.com> is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to the Respondent 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 (as an individual, business, or other organization) has been commonly known by the domain name, even if you have 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.”
In the present case, the Respondent did not file a response to the Complaint. However, based on the evidence on record, the Panel is satisfied that the Respondent has no rights or legitimate interests in the domain name.
The Complainant has submitted relevant evidence showing that the only content of the website to which the disputed domain name resolves are pay-per-click links that redirect Internet users to other online locations.
While a website containing pay-per-click links does not per se constitute any illegitimate or illegal activity, the Panel finds that in the circumstances of the present case, the Respondent is not making a bona fide offering of goods or services and that such use does not appear to be a fair use of the disputed domain name.
Moreover, the Panel finds that the Respondent is trying to misleadingly divert consumers to the website to which the disputed domain name resolves and that the Respondent is attracting Internet users to its website for commercial gain. Such use cannot be considered a bona fide use, nor a fair or noncommercial use.
Additionally, there is no evidence that the Respondent is commonly known as or identified by “porscha” or that it has any right in it. Furthermore, there is no evidence showing that the Respondent operates a business or any other organization under the disputed domain name.
For these reasons, and in the absence of a plausible explanation from the Respondent, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith. In particular, paragraph 4(b)(iv) provides as an instance of registration and use in bad faith, circumstances indicating that:
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s 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 the Respondent’s website or location.”
The Panel is satisfied that these circumstances are fulfilled in this case.
The Respondent has registered and used a domain name which incorporates the Complainant’s well-known trademark, with only a minor misspelling, which corresponds to a common pronunciation of the Complainant’s trademark in English-speaking countries. The only use that is made of the disputed domain name is to redirect Internet users to a pay-per-click website.
The generation of revenue from domain name parking or other advertising activities is not necessarily activity in bad faith. However, it is use in bad faith within the scope of paragraph 4(b)(iv) of the Policy where the respondent is using the disputed domain name in this manner because of its similarity to a mark or name of another person in the hope and expectation that that similarity would lead to confusion on the part of Internet users and result in an increased number of Internet users being drawn to that domain name parking page (see Express Scripts, Inc. v. Windgather Investments Ltd, supra). The confusion that is usually relevant here is the confusion that draws the Internet user to the respondent’s website in the first place (for example, confusion that leads an Internet user to type the domain name into his Internet browser). It does not matter that when the Internet user arrives at the pay-per-click site that it then becomes clear that the website is unconnected with the trademark holder (see Paris Hilton v. Deepak Kumar, WIPO Case No. D2010-1364).
Based on the facts that the Complainant’s trademark is well known throughout the world, that the Respondent registered a domain name that incorporates in its entirety the Complainant’s trademark with only a minor variation, and that such variation corresponds to a common pronunciation of the trademark, the Panel finds that in the present case, the Respondent has registered and used the disputed domain name in bad faith.
In the view of the Panel, this fulfills the conditions of paragraph 4(b)(iv).
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 name <porscha.com> be transferred to the Complainant.
Fabrizio La Spada
Dated: January 3, 2012