World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Dr. Ing. H.c. F. Porsche AG v. yangyong / Domain WhoIs Protection Services

Case No. D2012-1058

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 Domain WhoIs Protection Services of Hangzhou, Zhejiang, China (1st Respondent) / yangyong of Shanghai, China (2nd Respondent).

2. The Domain Name and Registrar

The disputed domain name <porsche-us.com> (the “Disputed Domain Name”) is registered with Hangzhou E-Business Services Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 18, 2012. On May 18, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 21, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent (i.e., the 1st Respondent) and contact information in the Complaint. The Center sent an email communication to the Complainant on May 30, 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 June 4, 2012. On May 30, 2012, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On June 3, 2012, the Complainant confirmed their request that English be the language of proceedings. The Respondent did not comment on the language of proceedings by the specified due date.

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 Respondent of the Complaint, and the proceedings commenced on June 7, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 27, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 28, 2012.

The Center appointed Kar Liang Soh as the sole panelist in this matter on July 12, 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. Factual Background

The Complainant has been in the business of making sports cars for over 70 years. The trademark PORSCHE is part of its trade name and distinguishes the Complainant’s make of sports cars. The trademark PORSCHE is registered as a trademark in various jurisdictions including the following:

Jurisdiction

Trademark number

Registration date

International

562572

October 27, 1990

International

639048

March 13, 1995

International

640976

July 13, 1995

United States of America

0618933

January 10, 1956

United States of America

1279014

May 22, 1984

United States of America

1431901

March 10, 1987

Between May 5, 2012 and May 8, 2012, the Complainant was approached by persons identified simply as “Kathy” and “Jessica” who offered to sell the Disputed Domain Name for EUR 5,000.

The Disputed Domain Name was registered on May 11, 2011. As of May 17, 2012, the Disputed Domain Name resolved to a parking website. As of June 3, 2012, the Disputed Domain Name still resolved to a parking website.

The WhoIs details of the Disputed Domain Name as of May 17, 2012 identified the 1st Respondent as the registrant. Following the Registrar verification identifying the 2nd Respondent as the registrant, the WhoIs details of the Disputed Domain Name was modified on May 21, 2012 to refer to the 2nd Respondent as the registrant. As of June 3, 2012, the 2nd Respondent was also the registrant of <linde-usa.com>, <vespa-us.com>, <tevaus.com>, <peugeot-scooters.com>, <kenzoboutique.com>, <fedex-us.com>, <adidas-golf.com>, <davidoffperfumes.com>, <syngentausa.com> and <bodumus.com>, all of which resolved to parking websites (Annexes to the Amendment to the Complaint).

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

(1) The Disputed Domain Name is confusingly similar to the Complainant’s trade name and trademark PORSCHE. The addition of “us”, being the ISO code for the United States of America, indicates a website operated by the Complainant addressed to a US audience;

(2) The Respondents have no rights or legitimate interests in respect of the Disputed Domain Name. There has never been a business relationship between the Complainant and the Respondents. The Respondents are not commonly known by the Disputed Domain Name. There is no bona fide offering of goods or services in connection with the Disputed Domain Name. The Respondents are not making any noncommercial use of the Disputed Domain Name; and

(3) The Disputed Domain Name was registered and is used in bad faith. Registration of a domain name for the purpose of selling it in excess of documented out of pocket costs directly related to the Disputed Domain Name is bad faith registration and use under paragraph 4(b)(i) of the Policy.

B. Respondent

Neither the 1st Respondent nor 2nd Respondent replied to the Complainant’s contentions.

6. Discussion and Findings

6.1. Language of Proceeding

The registration agreement is in Chinese and the default language of the proceeding is accordingly Chinese. The Complainant has requested that English be adopted as the language of the proceeding. In view of the following circumstances, the Complainant’s request is granted:

(1) The Complainant is not familiar with Chinese. It would be a major inconvenience to require translation of the Complaint into Chinese;

(2) The Respondents and/or the Respondents’ agents are able to communicate clearly in English. It is not apparent that adopting English as the language of the proceeding will be an obstacle to the Respondents;

(3) The Respondents have neither objected to the Complainant’s request nor commented about their language preference;

(4) The Respondents have chosen not to participate in the proceedings by not filing a Response;

(5) Requiring translation of the Complaint will lead to unnecessary delay to the proceeding; and

(6) No apparent advantage may be achieved by maintaining Chinese as the language of the proceeding.

6.2. Proper Respondent

The 1st Respondent is identified in the WhoIs record of the Disputed Domain Name as the registrant. For the purposes of business efficacy, the Register WhoIs record maintained by the Registrar must be taken as correct on the face. The public must be able to rely on the WhoIs record and should not be required to go behind the Register to discover the identity of the person having real control of a domain name. A person who engages another to act as apparent registrant of a domain name cannot select the benefit of cloaked anonymity and yet ignore the risks of non-compliance with the Policy. Therefore, the Panel is of the view that the 1st Respondent was properly named in these proceeding.

Paragraph 8(a) of the Policy clearly provides that a registrant cannot transfer a domain name to another holder during a pending administrative proceeding. The Complaint was notified to the Registrar on May 18, 2012 and the 2nd Respondent was updated as registrant on May 21, 2012. Although the proceeding did not commence until June 7, 2012 and paragraph 8(a) of the Policy was not contravened, the replacement of the 1st Respondent with the 2nd Respondent as the registrant of the Disputed Domain Name almost immediately after the Registrar was notified of the Complainant is regrettable. The addition of the 2nd Respondent in the amendment to the Complaint is a practical consequence of the modification of the WhoIs record and the Panel accepts that the 2nd Respondent was properly named as well.

6.3. Discussion

The Complainant is required to establish the following to succeed in this proceeding:

(1) The Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights;

(2) The Respondents have no rights or legitimate interests in the Disputed Domain Name; and

(3) The Disputed Domain Name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant owns rights in the trademark PORSCHE by virtue of its trademark registrations. The Disputed Domain Name incorporates that trademark PORSCHE in its entirety. The only difference between the Disputed Domain Name and the Complainant’s trademark PORSCHE is the suffix “us” separated from the word “Porsche” by an insignificant hyphen. The letters “us” are readily understood by a reasonable person to refer to the United States. The suffix is a clearly descriptive element and does not assist to distinguish the Disputed Domain Name from the Complainant’s trademark PORSCHE. Therefore, the Panel holds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark PORSCHE.

B. Rights or Legitimate Interests

The Complainant has confirmed that it has no business relationship with the Respondents. There is no evidence to suggest that the Respondents are known by the Disputed Domain Name or are making any noncommercial or fair use of the Disputed Domain Name. The Panel holds that the Complainant has established a prima facie case that the Respondents do not have any rights or legitimate interests in the Disputed Domain Name. The burden of production having been shifted to the Respondent is not rebutted in view of the absence of a Response. Therefore, the prima facie case stands. Accordingly, the Respondents have no rights or legitimate interests in the Disputed Domain Name.

C. Registered and Used in Bad Faith

Paragraph 4(b)(i) of the Policy identifies the following situation as indicating bad faith registration and use of a domain name by the registrant:

“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 trademark 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;”

There is evidence before the Panel which indicates that the Complainant was approached with an offer to sell the Disputed Domain Name for EUR 5,000. The Panel is unable to conceive of any reasonable justification that EUR 5,000 corresponds to reasonable out-of-pocket costs directly related to a domain name which resolved to a parking website. The Complainant has asserted that this amount is far in excess of reasonable out-of-pocket expenses and the Panel cannot but agree in the absence of evidence suggesting otherwise.

The offer was made by persons named simply as “Kathy” and “Jessica” writing from an email address that is not listed in any of the contact particulars of the Respondents reflected in the WhoIs records. Nevertheless, the Complainant has leveled a very strong allegation that such persons were acting on behalf of the Respondents. If such allegation were untrue, a reasonable person in the Respondents’ position should have denied it vehemently. Unfortunately, the Respondents have chosen to remain silent. The Panel must accordingly draw an inference from this silence that the Respondents are unable to refute the allegation. Therefore, the Panel holds that on the available evidence, the Respondents made an offer to sell the Disputed Domain Name to the Complainant for an inordinate sum of EUR 5,000 which far exceeds the out-of-pocket expenses related to the Disputed Domain Name. Having found as such, the situation of bad faith registration and use pursuant to Paragraph 4(b)(i) of the Policy is established.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <porsche-us.com>, be transferred to the Complainant.

Kar Liang Soh
Sole Panelist
Dated: July 30, 2012

 

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