WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dr. Ing. h.c. F. Porsche AG v. Victor Nelson
Case No. D2012-1995
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 Victor Nelson of Portland, Oregon, United States of America.
2. The Domain Names and Registrar
The disputed domain names <classicporschecars.com>, <porschemuseum.com> and <theporschehaus.com> are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 10, 2012. On October 10, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 11, 2012, the Registrar 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 15, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 4, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 5, 2012.
The Center appointed Jon Lang as the sole panelist in this matter on November 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 is a famous manufacturer of sports cars. It uses the name PORSCHE as a trade name and has numerous national and international registered trademarks consisting of, or incorporating the name PORSCHE e.g. U.S. Trademark Registration No. 0618933 for PORSCHE, with a registration date of January 10, 1956 and International Registration No. 179 928 for PORSCHE, with a registration date of October 8, 1954. The Porsche trademark and trade name are known throughout the world and enjoy a reputation for high quality and excellence. PORSCHE cars are distributed worldwide through a network of official dealers. The Complainant operates a website at “www.porsche.com”. Part of the website is dedicated to the Porsche Museum which was completed after a period of widely reported construction beginning in 2005. There was a “grand opening” of the Museum in 2009.
Little is known about the Respondent who has not participated in these proceedings. From research carried out by the Complainant, it seems that the Respondent is connected to two companies – “Zenith Machine Sales, Inc”, registered in 1993, and “Nelson Investment Company, LLC”, registered in 2002. Apparently there is no sign of recent activity from either company.
In 2006, the Respondent began registering domain names.
On February 27, 2006 the Respondent registered the domain name <classicslist.com> which resolves to a Sedo parking page containing sponsored listings.
On April 25, 2006, the Respondent registered the domain name <bendweddingguide.com> which resolves to a Sedo parking page containing sponsored listings.
On October 13, 2006, the Respondent registered the domain names <porschemuseum.com> and <theporschehaus.com> (both the subject of these proceedings).
Also on October 13, 2006, the Respondent registered the domain names <vwslist.com>, <theskistate.com>, <bestportlandhome.com> and <americanautolist.com> which all resolve to Sedo parking pages containing sponsored listings.
On March 26, 2008, the Respondent registered the domain name <classicporschecars.com> (the third domain name the subject of these proceedings)..
As to the three domain names, <classicporschecars.com>, <porschemuseum.com> and <theporschehaus.com> (collectively the “Domain Names”):
<porschemuseum.com> resolves to a parking site which includes car related links under the heading “Expired Website”. Some of the links are to sites which suggest that they concern car manufactures other than Porsche e.g. Jeep Wrangler. An image of the website as it was in February 2011, suggests that the Respondent planned to launch a commercial site in 2010 relating to the Complainant (“Classifieds, Forums, Tech…everything Porsche!”). However, it seems that such a site was never launched.
<classicporschecars.com> and <theporschehaus.com> both resolve to Sedo parking pages containing links to car related sites (amongst others), including “Sabaru XV”, “Mojacar Spain Car rentals”, ”BMW Z4 Roadster” and “Skoda Fahrzeugmodelle”
The Respondent is not an official dealer for Porsche.
5. Parties’ Contentions
The Domain Names are confusingly similar to the Complainant’s trademark and trade name PORSCHE which they combine with descriptive elements – “museum”, “classic”, “cars” and “haus” (meaning house in German).
The Respondent has no right or legitimate interest in respect of the Domain Names. There is no use, or preparations to use the Domain Names for a bona fide offering of goods or services. There has never been a business relationship between the parties and the Respondent is not commonly known by any of the Domain Names. Moreover, the Respondent is not making any noncommercial use of the Domain Names (which resolve to parking websites).
The Respondent has registered and uses the Domain Names in bad faith. The Respondent relies on two grounds set out in the Policy. The first, paragraph 4(b)(ii) “you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct;” and to this end the Complaint refers to the (three) Domain Names and paragraph 4(b)(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.’” In respect of this latter ground, the Complainant refers to the Respondent earning revenue through pay-per-click commission by participating in the Sedo parking websites scheme, which the Complainant regards as bad faith use. Moreover, as far as the disputed domain name <porschemuseum.com> is concerned, the Complainant refers to the original intention of the Respondent to launch a website that would have featured advertising (“classifieds”) which, the Complainant maintains, would also have been use in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is:
(i) identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
A complainant must prove each of these three elements.
A. Identical or Confusingly Similar
The Complainant clearly has rights in its trademark, PORSCHE.
The Domain Names all incorporate the Complainant’s trademark in its entirety and is very much their dominant element, being a distinctive mark of considerable fame combined, in all three Domain Names, with generic or descriptive words – “museum”, “classic”, “cars” and “haus”.
As the mark and Domain Names are not identical however, the issue of confusing similarity must be considered. Under the UDRP, the test for confusing similarity involves a comparison between the trademark and the domain name to determine likelihood of Internet user confusion. To satisfy the test, the trademark to which the domain name is said to be confusingly similar would generally need to be recognisable as such within the domain name. The addition of common, dictionary, descriptive, or negative terms are usually regarded as insufficient to prevent Internet user confusion. Application of the confusing similarity test under the UDRP typically involves a comparison, on a visual or aural level, between the trademark and the domain name.
Given the highly distinctive nature of the PORSCHE mark, which is readily recognisable within all the Domain Names (and very much their dominant element), the Panel is satisfied that the Domain Names are confusingly similar to the Complainant’s trademark, PORSCHE.
Even if one were to adopt a possibly slightly higher burden and require, as some panels have done, a risk that Internet users may actually believe that there is a real connection between the domain name in issue and the complainant and/or its goods and services, the Complainant would succeed in showing confusing similarity. The impression created by the Domain Names may well give rise to the possibility that Internet users would think that there is some form of association between the Respondent (the owner of the Domain Names) and the Complainant.
Accordingly, the Panel holds that the Domain Names are confusingly similar for the purposes of the Policy and thus this element of paragraph 4(a) of the Policy has been established.
B. Rights or Legitimate Interests
By its allegations in the Complaint, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Names and, as such, the burden of production shifts to the Respondent to come forward with appropriate arguments or evidence demonstrating that it does in fact have such rights or legitimate interests. The Respondent has not done so and the Panel is entitled to find, given the prima facie case made out by the Complainant, that the Respondent lacks rights or legitimate interests for the purposes of the Policy.
Nevertheless, it is perhaps appropriate to deal with rights and legitimate interests (or the absence thereof) in a little more detail.
A respondent can show it has rights to or legitimate interests in a domain name in various ways even where, as is the case here, it is not licensed by or affiliated with the complainant. For instance, it can show that it has been commonly known by the domain name or that it 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.
Here, however, the Respondent is not known by the Domain Names. Moreover, given the nature of the websites to which the Domain Names resolve i.e. a parking pages containing links to websites of others, the Panel would not accept that there is legitimate noncommercial or fair use. In any event, it is difficult to conclude that the Respondent does not derive a commercial benefit from the use to which the Domain Names have been put. Moreover, any noncommercial or fair use must be without intent to mislead, but it is likely in fact (in the absence of any alternative explanation), that the very purpose in the Respondent choosing the Domain Names he did was to deliberately create a false impression of association with the Complainant. In Drexel University v. David Brouda, WIPO Case No. D2001-0067, the panel stated that “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant”. This seems to be the case here.
A respondent can also show that it is using a domain name in connection with a bona fide offering of goods or services. However, it would be difficult to accept that domain names, that resolve to parking pages, which so obviously take advantage of the fame of the trademark to which they are confusingly similar, are being used in connection with a bona fide offering. As paragraph 2.6 of the second edition of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) makes clear, it is possible, in certain circumstances, for use of a domain name for advertising purposes, (including parking pages) to provide a legitimate interest within the meaning of the Policy. For instance, if a registrant intends to profit from the descriptive element of a domain name without intending to take advantage of a third party’s rights. However, as the panel noted in Paris Hilton v. Deepak Kumar, WIPO Case No. D2010-1364, if the owner of the domain name is using it in order “…to unfairly capitalise upon or otherwise take advantage of a similarity with another’s mark then such use would not provide the registrant with a right or legitimate interest in the domain name (see, for example, the decision of the three member panel in Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267)”. The Respondent’s choice of domain names here seems a clear attempt to unfairly capitalise on or otherwise take advantage of the Complainant’s mark.
There is no evidence before this Panel that the Respondent has rights or legitimate interests in the Domain Names. The Respondent has not come forward with a Response or taken any other action to address the Complaint. The contentions of the Complainant, by which it has made out a prima facie case that the Respondent has no rights or legitimate interests, have not been contradicted or challenged, or cast into doubt by the brief analysis set out above and accordingly, the Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that evidence registration and use of a domain name in bad faith. The Respondent relies on two - paragraph 4(b)(ii) “you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct” and paragraph 4(b)(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.’”
Taking paragraph 4(b)(iv) first, it appears that the Respondent has indeed intentionally attempted to attract, for commercial gain, Internet users to the websites to which the Domain Names resolve by creating a likelihood of confusion with the Complainant’s Porsche trademark. It matters not that once the Internet user arrives at the websites, it is immediately clear, because they are parking sites, (or otherwise), that they are unconnected with the Complainant. The Internet user will have been confused, at least initially, as to the relationship between the websites and trademark owner and that is enough to establish bad faith. Accordingly, the Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Names in bad faith by reference to paragraph 4(b)(iv) of the Policy.
As to the second ground relied on by the Complainant, namely that the Respondent has prevented it from reflecting the mark in corresponding domain names, (“provided that you [the Respondent] have engaged in a pattern of such conduct”), the Complainant relies on the three domain names the subject of these proceedings. As to what a Complainant must show to establish a pattern of conduct, paragraph 3.3 of the WIPO Overview 2.0, indicates that the ‘consensus view’ is that a “…pattern of conduct can involve multiple UDRP cases with similar fact situations or a single case where the respondent has registered multiple domain names which are similar to trademarks. However the registration of two domain names in the same case is not generally sufficient to show a pattern, nor is a single prior example of apparent bad faith domain name registration. Although panels will generally look to the specific circumstances, a pattern normally requires more than one relevant example”. Given the Respondent has registered three domain names incorporating the Complainants’ Porsche trademark, the Panel is satisfied on this ground too that there is evidence of both registration and use of the Domain Names in bad faith for the purposes of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <classicporschecars.com>, <porschemuseum.com> and <theporschehaus.com> be transferred to the Complainant.
Dated: November 25, 2012