WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dr. Ing. h. c. F. Porsche AG v. Wei Xiao / Registration Private
Case No. D2012-0768
1. The Parties
The Complainant is Dr. Ing. h. c. F. Porsche AG of Stuttgart, Germany, represented by Lichtenstein, Körner & Partners, Germany.
The Respondents are Wei Xiao of Shanghai, China and Registration Private Domains by Proxy, LLC of Scottsdale Arizona, United States of America.
2. The Domain Name and Registrar
The disputed domain name <porsche-gallery.info> is registered with GoDaddy.com, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 13, 2012. On April 13, 2012, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain name. On April 16, 2012, GoDaddy.com, LLC . transmitted by email to the Center its verification response disclosing registrant Wei Xiao and contact information for the disputed domain name which differed from the named respondent Registration Private and contact information in the Complaint. The Center sent an email communication to the Complainant on April 18, 2012, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on April 20, 2012, adding Wei Xiao as a second respondent.
The Center verified that the Complaint together with the amendment to 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 Respondents of the Complaint, and the proceedings commenced on April 23, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 13, 2012. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on May 15, 2012.
The Center appointed Jonas Gulliksson as the sole panelist in this matter on June 4, 2012. 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. Identity of Respondent
The Complaint was filed by the Complainant with the Center against Registration Private, the WhoIs-listed registrant of the Domain Name at that time. The Registrar has then in its response to the Center exposed the registrant of the disputed domain name as Wei Xiao.
In cases when the concerned registrar in response to a request from the Center discloses an underlying registrant of the disputed domain name that differs from the privacy or proxy registration service which appeared in the WhoIs at the time the complaint was filed the panel has discretion to determine the identity of the proper respondent. In paragraph 4.9 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") the following recommendations are given pending uniform instructions from the ICANN on the issue: “[…] a complainant may choose to either add a disclosed underlying registrant as a co-respondent to the complaint, or replace the originally named privacy or proxy service with the disclosed “underlying registrant”, or (as rarely happens) retain the privacy or proxy service as the sole named respondent; also, in any case, the complainant may choose to amend or supplement its substantive pleadings in light of any such disclosure”.
In this case the Complainant has requested that Wei Xiao be added as a co-respondent.
The Panel finds that Registration Private and Wei Xiao have been notified of this proceeding and of their right to respond to the Complaint at the contact information pursuant to paragraph 2(a) of the Rules.
The Panel determines, in accordance with the request of the Complainant, that both Wei Xiao and Registration Private are Respondents in this case.
5. Factual Background
The Complainant has proven its ownership of several PORSCHE trademark registrations inter alia the following United States Patent and Trademark Office (USPTO) registered trademarks :
- PORSCHE Reg. No. 0618933, registered on January 10, 1956 for automobiles and parts thereof.
- PORSCHE Reg. No. 2200107, registered on October 27, 1998 for arranging travel tours; travel agency services, namely, arranging reservations and bookings for transportation and travel agency services, namely, arranging reservations and bookings for temporary lodging.
- PORSCHE Reg. No. 1431901, registered on March 10, 1987 for stationery, namely, writing pads, writing cases, note pads, and memo pads; writing instruments, namely, mechanical pencils and pens; photographs; decalcomanias; binders; [ playing Cards; ] and printed material, namely, books and magazines comprising articles relating to Applicant and automotive histories
The disputed domain name was registered on April 27, 2011.
6. Parties’ Contentions
Complainant has been a maker of sports cars for more than 70 years, utilizing PORSCHE as the prominent and distinctive part in its trade names. It also owns numerous registered trademarks worldwide consisting of or incorporating the word “porsche”. Trademark and trade name PORSCHE are known throughout the world and enjoy a reputation for high quality and outstanding performance.
Porsche cars are distributed worldwide through a network of official dealers. The Complainant operates its web site at “www.porsche.com”. For purposes of documentation, information and advertising the Complainant has had photographers shoot photos of each car model in its product range. Photos of each car model are displayed in gallery sections in the Complainant’s website or released to the press.
In its legal notice on the website, the Complainant advises users of the copyright protection of these photographs and its limited authorization for personal use only.
There has never been any business relationship between the parties and the Complainant has not authorized any of the Respondents to make use of the Complainant’s name, trademark or photographs.
The disputed domain name is being used to redirect to a website where photographs of Porsche cars are displayed and offered for downloading. By the design of the website with the word “porsche” and the Porsche Shield and the lack of any wording to the contrary it pretends to be an official source of photographs. The photos have been copied and complied from various sources including the Complainant’s official website. The website linked to the disputed domain name prominently features Google ads on each page where enlarged photographs are displayed. The ads feature links to a variety of sites, some related to the Complainant, some to the Complainant’s competitors and some with matters not related to the Complainant. The Respondents earns click-through fees for each of these ads. Also, the texts on the website linked to the disputed domain name that accompanies the photographs has been copied from the English Wikipedia.
The disputed domain name is confusingly similar to the Complainant’s trade name and trademark PORSCHE which it embodies identically, just adding the descriptive element “gallery” that indicates an official website.
The Respondents have no rights or legitimate interests in the disputed domain name. There is no use or preparation to use the disputed domain name in connection to a bona fide offering of goods or services. There is not and has never been a business relationship between the parties. None of the Respondents are commonly known by the disputed domain name. The Respondents are not making noncommercial use of the disputed domain name, rather it earns click-through fees via Google ads.
The disputed domain name has been registered and is being used in bad faith. The PORSCHE trademark has a global reputation and is registered around the world. The elements and design of the website make Internet users believe that it is an official source of information and photographs. Also, the website serves no other purpose than to earn click through fees.
The Respondent Wei Xiao has registered with the same registrar a number of domain names that incorporate well known trademarks, preferably names of auto makers to use them as a redirection to websites with wallpaper for computer screens and compilations of copied and posted photos very much in the same way as done in the present case. Examples of such registrations are <renaultcarpic.com>, <citroenview.com> and <skodacarshow.com>.
The Respondents have registered the disputed domain name either to sell it for a price exceeding the registration cost or to attract, for commercial gain, Internet users to the website.
The Complainant has on March 2, 2012, via e-mail contacted the Respondent Registration Private and demanded a transfer of the disputed domain name.
None of the Respondents replied to the Complainant’s contentions.
7. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has relied on the registrations of the PORSCHE trademarks. By the registrations submitted by the Complainant, the Panel finds that the Complainant holds rights to the PORSCHE trademark.
In accordance with the consensus view, the Panel does not regard the top-level suffix “.info” when deciding if the disputed domain name is identical or confusingly similar to the Complainant’s trademark. In accordance with this, the disputed domain name and the registered trademark PORSCHE only differ by the generic word “gallery”. The Panel finds that the registered PORSCHE trademark constitutes the most distinctive element of the disputed domain name and that the addition of the word “gallery” to the trademark is insufficient to avoid a finding of confusing similarity under the first element of the Policy (see Lime Wire LLC v. David Da Silva/Contractprivacy.com, WIPO Case No. D2007-1168; see also SAP AG v. Hugo Hector Ferreyra, WIPO Case No. D2011-0073).
In accordance with the findings above, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s registered PORSCHE trademark in the meaning of the paragraph 4(a)(i) of the Policy and the first element of the Policy is thus fulfilled.
B. Rights or Legitimate Interests
The Complainant must make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy and then the burden of production shifts to the Respondent to prove its rights or legitimate interests.
The Complainant has stated that there are no business relations between the Complainant and the Respondents that would give the Respondents rights to use the PORSCHE trademark in the disputed domain name. The Complainant has submitted printouts from the website linked to the disputed domain name as well as printouts from its own website. The printouts submitted prove that on the website linked to the disputed domain name the Respondents are inter alia presenting pictures of Porsche cars previously used by the Complainant as well as the Complainant’s trademark PORSCHE. Also, the pictures are used together with ads for different products and services. The Panel finds this to be an indication that the Respondents’ use of the disputed domain name is not a bona fide offering of goods or services.
The Panel finds, based on the evidence provided on the record, that the Respondents are not commonly known by the disputed domain name. Further, there are no indications that the Respondents are making a legitimate noncommercial or fair use of the disputed domain name.
In the light of what is stated above, the Panel finds that the Complainant has made a prima facie case that the Respondents lack rights or legitimate interests in the disputed domain name. The Respondents have not proved otherwise. Therefore, the Panel finds that the second element of the paragraph 4(a) of the Policy is fulfilled.
C. Registered and Used in Bad Faith
Paragraph 4(b)(iv) of the Policy states that if by using the domain name a registrant has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location or of a product or service on the registrant’s website or location, that shall be evidence of the registration and use of a domain name in bad faith.
The Panel finds that the trademark PORSCHE is notorious in relation to sport cars due to the 70 years of extensive use world wide. This means that the Respondents have obviously been aware of the Complainant’s rights in the PORSCHE trademark and that the disputed domain name’s word combination “porsche-gallery” has been selected with the Respondent’s prior knowledge of the Complainant’s rights and business. Also, the Panel finds that the other domain name registrations of Wei Xiao, of which the Complainant has submitted WhoIs-information and screenshots of websites, such as “www.renaultcarpic.com” and “www.citroenview.com”, are used in a similar way as the disputed domain name which provides a clear indication of a pattern of bad faith registrations.
As mentioned under “Rights or Legitimate Interests” above, the Respondents have been using the Complainant’s photographic material in connection with the Complainant’s trademark. The Panel finds that the fact that the Respondents are using a domain name including the Complainant’s trademark with a generic word, together with the Respondents’ use of the Complainant’s photographic material and its trademark as well as displaying ads linking to the Complainant’s competitors, is sufficient to indicate both registration and use in bad faith. It is the Panel’s firm view that the Respondents have registered the disputed domain name in awareness of the Complainant with the clear aim of taking advantage of the confusion between the disputed domain name and the Complainant’s rights. Therefore, the Panel finds that the Respondents’ registration and use of the disputed domain name has intentionally attempted to attract, for commercial gain, Internet users to their website by creating a likelihood of confusion with the Complainant's mark as to inter alia the source of its website.
The Panel does not, from the evidence submitted in this case, find that the Complainant has proven that the disputed domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name.
Accordingly, the Panel finds that the third element of the paragraph 4(a) of the Policy is fulfilled.
For 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 <porsche-gallery.info> be transferred to the Complainant.
Dated: June 18, 2012