WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dr. Ing. h.c. F. Porsche AG v. Porshe Design Porsche Adidas
Case No. D2012-2029
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 Porshe Design Porsche Adidas of Pfulllingens, Harburg, Germany.
2. The Domain Name and Registrar
The disputed domain name <porschesdesign.com> is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 12, 2012. On October 12, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 12, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 18, 2012.
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 October 19, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 8, 2012. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on November 9, 2012.
On November 12, 2012, the Center received an email communication from the Respondent stating: “waht is the problem of the dormains ?”. On the same day, the Center acknowledged receipt and informed the Respondent of the UDRP proceeding, noting that the to-be-appointed panel would decide in its sole discretion whether to consider any late Response, and that the Respondent’s email communication would be forwarded to the panel for its consideration. On November 13, 2012, the Respondent replied, stating: “sorry for the trouble. could you please suspend this dormain ?”. The Center acknowledged receipt on the same day, and informed the parties regarding the possibility of a suspension of the proceedings to explore a possible settlement between the parties. On November 17, 2012, the Complainant indicated that it had tried to contact the Respondent but received no response, and therefore requested the Center to continue the UDRP proceedings.
The Center appointed Torsten Bettinger as the sole panelist in this matter on November 20, 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 perhaps best known as a purveyor of high-end luxury vehicles, but the company is also engaged in the design, development and production of a number of additional and/or complimentary products. One of these additional ventures includes the creation of sports shoes, under the P’5000 Sport line, which are marketed and developed in connection with the Adidas company. The Porsche-Adidas strategic partnership has been in force since 2005, and the Complainant’s co-branded line of sportswear has been commercially available since 2006.
The Complainant’s authorized licensee, Porsche Design Management GmbH & Co. KG is the registered holder of the domain name <porsche-design.com>, whereupon the Complainant’s legitimate P’5000 Sport products are offered. The Complainant’s P’5000 Sport items, including its various Porsche-Adidas sneakers, are also sold through a wide network of retailers.
The Complainant secured registration for its PORSCHE mark as early as 1952, and additionally has provided documentation showing that its PORSCHE DESIGN trademark has been registered since at least 1980.
The disputed domain name was registered on September 22, 2011 and is being used to display a website offering a wide variety of footwear under the “Porsche” and “Adidas” names. Several of the graphics displayed on the site, as well as the background color and header font, are similar in presentation to the content of the <porsche-design.com> website, operated by the Complainant’s licensee.
5. Parties’ Contentions
The Complainant asserts that each of the elements specified in paragraph 4(a) of the Policy has been satisfied.
With regard to the first element of the Policy, the Complainant states that the disputed domain name is confusingly similar to both its PORSCHE and PORSCHE DESIGN trademarks. The disputed domain name contains the entirety of both marks adding only an “s” between the “porsche” and “design” components of the latter, which is not distinctive and does not distinguish the domain name from the registered marks.
The Complainant avers that the Respondent has no rights or legitimate interests in the disputed domain name as it is not an authorized reseller of the Complainant’s goods, and has not been licensed to use the Complainant’s marks in any way. The Complainant alleges that the Respondent uses the disputed domain name to display “an online store with counterfeit merchandise that is designed to appear as if it were run by the [C]omplainant.” Thus, the Complainant states that the Respondent’s use of the disputed domain names is not a bona fide offering, nor a noncommercial or fair use.
With regard to the final element under the Policy, the Complainant states that the Respondent’s actions constitute bad faith registration and use under paragraph 4(b)(iv), as the Respondent has utilized the Complainant’s marks to drive traffic to its website for commercial gain.
The Complainant further alleges that the Respondent’s WhoIs-listed address is non-functional; namely, that the town name Harburg (as provided) does not correspond to any actual location and that the zip code listed does not match up with the “closest” town name in Germany. After having undertaken some research into the domain name records and the telephone numbers listed for the Respondent, the Complainant believes the Respondent to be connected to an entity in China.
The Respondent did not formally reply to the Complainant’s contentions. The content of the Respondent’s two email communications, reproduced above, do not provide any substantive reply to the Complaint nor any explanation of the Respondent’s actions regarding the disputed domain name.
6. Discussion and Findings
A. Identical or Confusingly Similar
In order to succeed under the first element of the Policy, the Complainant must demonstrate both its rights in the relevant trademark, and that the disputed domain name is identical or confusingly similar to said trademark.
By virtue of its numerous trademark registrations for PORSCHE and PORSCHE DESIGN, the Panel is satisfied that the Complainant has demonstrated its rights in these marks for the purposes of the Policy.
The test for identity or confusing similarity is confined to a comparison of the textual string of the disputed domain name and the trademark alone, independent of the products for which the domain name is used or other marketing and use factors generally considered in trademark infringement. See Europages v. Match Domains LLC, Domain Admin, WIPO Case No. D2011-1161 and Sierra HealthStyles LLC v. Modern Limited - Cayman Web Development, WIPO Case No. D2006-0020. It has furthermore been well established that a gTLD suffix, such as “.com”, is generally held to be irrelevant for the purposes of determining identity or confusing similarity under the Policy. See Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
The textual string of the disputed domain name, “porchesdesign” represents the entirety of the Complainant’s PORSCHE DESIGN trademark with an additional “s” introduced between the two component words, “porsche” and “design”. The addition of this “s” does nothing to distinguish the disputed domain name from the mark, nor to dispel the risk of confusing similarity. See Fannie May Confections, Inc. v. Domain Contact 2 (FANNIEMAYS-COM-DOM), WIPO Case No. D2006-0813.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s PORCHE and PORSCHE DESIGN trademarks, and that the Complainant has established the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name. It is, however, the consensus view among WIPO UDRP panelists that if the complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show one of the three circumstances under paragraph 4(c) of the Policy, then the respondent may lack a legitimate interest in the domain name. See Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.
In this case, the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name. The Complainant confirms that it has not licensed or authorized the Respondent to use its PORSCHE or PORSCHE DESIGN marks in any fashion and that there is no connection between the Respondent and the Complainant. As the website is commercial in nature, it is clear the Respondent is not making any noncommercial or fair use of the domain name.
The question remains as to whether or not the Respondent’s activities undertaken in connection with the disputed domain name constitute a bona fide offering of goods or services. As noted above, the Respondent’s website mimics in many respects the “look and feel” of the authorized website provided by the Complainant’s licensee. Additionally, the Respondent uses its website to sell footwear which, upon inspection of the graphics shown online, appears to be similar to the Complainant’s P’5000 Sport line offered in connection with the Adidas company.
The Complainant has alleged in its Complaint that the PORSCHE-branded products offered on the Respondent’s website are counterfeit goods, but provides no substantiating evidence or documentation to support these claims. As noted by previous UDRP panels, where counterfeiting is alleged, it is generally necessary for complainants to provide sufficient documentation evidence (including, as appropriate, consumer testimonials, “trap” purchases, investigative reports, etc.) in order to verify their claims. See, e.g., Karen Millen Fashions Limited v. Danny Cullen, WIPO Case No. D2011-1134 and Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Chunhai Zhang, WIPO Case No. D2012-0136. Accordingly, given the complete lack of evidence supplied in this regard, the Panel is unable to make any determination as to the authenticity of the PORSCHE-branded goods offered on the Respondent’s website.
The Respondent’s site, however, does not only offer Porsche-branded products. Although the P’5000 Sport line, and the Adidas Porsche Bounce shoes, feature prominently in the advertising on the site, a wide variety of additional products are also offered which appear to be unrelated to the Porsche brand. Some of these various items include shoes named “Jeremy Scott Adidas JS Mickey High”, “Adidas Originals Stan Smith”, “Adidas Jogging Hi Chewbacca”, “Adidas Originals Star Wars”, “Jeremy Scott Adidas JS Logo”, “Adidas Jeremy Scott JS Panda Bear”, and others. Therefore, the products offered by the Respondent (even if the “Adidas Porsche Bounce” shoes were determined, upon inspection, to be the Complainant’s authentic goods), are clearly not limited to footwear bearing the PORCHE mark. Thus, the Respondent’s activities would run afoul of the standard “Oki Data” test for reseller rights, as the website is not solely used to sell the goods and services related to the trademark included in the disputed domain name, and the website does not disclose the relationship between the parties. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, and Canon U.S.A. Inc. v. Miniatures Town, WIPO Case No. D2011-1777.
Accordingly, the Panel finds that the Respondent’s activities are not consistent with a bona fide offering of goods or services, and that there is no evidence on the present record to indicate that the Respondent maintains any rights or legitimate interests in the disputed domain name. Thus, the requirement of paragraph 4(a)(ii) has also been satisfied.
C. Registered and Used in Bad Faith
The Complainant has demonstrated that its PORSCHE and PORSCHE DESIGN marks were registered and in use in international commerce for over half a century before the registration of the disputed domain name in September 2011. Given the Complainant’s longstanding use of its PORSCHE trademarks, the Respondent’s selection of a domain name that differs by only one letter from the website of the Complainant’s authorized licensee, and the use to which the Respondent has put the domain name, it is clear to the Panel that the Respondent was aware of the Complainant at the time it selected the disputed domain name for registration.
Furthermore, by fully incorporating the Complainant’s trademarks in the disputed domain name and using the domain name in connection with a website which copies much of the online format utilized by the Complainant’s authorized licensee, it is apparent that the Respondent has attempted to deceive Internet users in an attempt to draw visitors to its website. In addition, the Respondent has offered goods for sale which are competitive with those of the Complainant, in an attempt to “bait and switch” consumers lured to its site through the incorporation of the Complainant’s well-known trademark in the domain name. Therefore, it is clear that the Respondent was attempting to divert Internet traffic intended for the Complainant’s website to its own for commercial gain by creating a likelihood of confusion as to the source or sponsorship of the Respondent’s site and products. Such use constitutes bad faith under paragraph 4(b)(iv) of the Policy. See Chicago Mercantile Exchange Inc. v. Whois Privacy Protection Service Inc./Nguyen Thanh Cong, WIPO Case No. D2010-1766.
The Panel therefore concludes that the requirement of paragraph 4(a)(iii) of the Policy has also been met.
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 <porschesdesign.com> be transferred to the Complainant.
Dated: November 27, 2012