WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dr. lng. h.c. F. Porsche AG v. Registration Private, Domains By Proxy, LLC / Jaya Yella
Case No. D2017-0044
1. The Parties
The Complainant is Dr. lng. h.c. F. Porsche AG of Stuttgart, Germany, represented by Lichtenstein, Körner & Partners, Germany.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America (“United States” or “USA”) (“the First Respondent”)/ Jaya Yella of North Billerica, Massachusetts, United States and Andhra Pradesh, India (“the Second Respondent”).
2. The Domain Name and Registrar
The disputed domain name <p0rsche.com> (the “Domain Name’) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 11, 2017. On January 11, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 12, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 13, 2017 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 January 14, 2017. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed a second amendment to the Complaint on January 19, 2017.
The Center verified that the Complaint together with the amendments 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 23, 2017. In accordance with the Rules, paragraph 5, the due date for Response was initially February 12, 2017. Following a request for extension of the due date for Response, the Center extended the due date for the Response to February 19, 2017. The Respondent sent several email communications to the Center on different dates. On February 20, 2017 the Center notified the Parties that it would proceed to appoint the Administrative Panel.
The Center appointed Dawn Osborne as the sole panelist in this matter on March 3, 2017. 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 owns numerous trade mark registrations for PORSCHE, inter alia in the USA, inter alia for vehicles with registrations going back to the 1950s.
The Domain Name resolves to a parking page with third party commercial links. The Second Respondent has offered to sell the Domain Name to the Complainant for an amount above USD 30,000.
5. Parties’ Contentions
The Complainant’s contentions can be summarised as follows:
The Complainant has manufactured sports cars for more than 70 years, utilising PORSCHE as the prominent and distinctive part of its trade name. It owns numerous trade mark registrations for PORSCHE, inter alia in the USA, inter alia for vehicles. It owns the domain name <porsche.com>.
The First Respondent is a privacy service. The Second Respondent conceals his identity by using the privacy service. The Domain Name points to a Registrar parking page with third party commercial links related to car sales. The Second Respondent is a fake identity. The apartment at the address is owned by a completely different person. A call to the telephone number elicited the reaction “wrong number”. There is no other trace of the Second Respondent on the Internet.
The Domain Name contains a sign almost identical to the Complainant’s PORSCHE trade mark using the number ‘0’ instead of the letter ‘o’ to emulate the Complainant’s mark and make the Domain Name confusingly similar to it.
The Respondent has no rights or legitimate interests in the Domain Name. There is no and has never been a business relationship between the Complainant and the Respondent. The Respondent is not commonly known by the Domain Name. Using the Domain Name to link to third party websites is not a legitimate interest.
The Respondent is engaged in bad faith passive holding in particular because the name of the Respondent is concealed. Using a false identity proves bad faith passive holding of the Domain Name.
The Respondent shows an awareness of the Complainant's name and trade mark by using a Domain Name designed to mislead the public by switching the ‘O’ in the Complainant’s trade mark to the number ‘0’ which look the same.
Whilst it has not provided a formal Response, the Second Respondent wrote to the Center in the following terms.
“My name is Jaya R Yella I used to live in the USA but I moved back to India, here is my new address please send all correspondence to below address.
You filthy rich corporations can’t take away my innovative thinking, p0rsche.com (with zero) has nothing to do with Porsche.com.
Jaya R Yella”
This was followed by the further e-mail:
“Please note I am a decent hard working American citizen who is tax payer and in good faith I have registered domain (http://www.p0rsche.com) with Zero. I am great fan of Porsche cars and one day I will definitely buy one at least a used one, and I will post my private pictures along with Porsche car, for that reason I registered this domain, anyone in the world may buy a Porsche car but, I will be the only one person who has my own Porsche website with zero instead of “o”, your dispute clearly violates basic human fundamental right to think freely and innovative ideas, disputing my case is really example of how ordinary people dreams get crushed.”
The Second Respondent requested more time to file a response saying false allegations had been made against him and said in an e-mail to the Center that he did not register the Domain Name to sell it and had refused offers from rich people for it. He said that the advertising on the parked pages is placed by the Registrar and that he never ordered or paid for any hosting services. He copied the Registrar and asked it to respond on his behalf to confirm he never ordered any hosting services. The Registrar responded explaining the Respondent had an option under his agreement with it to put up a free instapage if he did not want parked pages to display. The Second Respondent replied asking the Registrar to confirm he did not receive any money on the free parking page and saying he did not choose to put commercial links on the site attached to the Domain Name. The Registrar replied pointing the Second Respondent to its Policy and arbitration forum.
The Second Respondent sent a further letter repeating many of his earlier contentions. His additional relevant points can be summarised as follows:
The Domain Name was registered in 2005. The Second Respondent only used a privacy service to avoid spam including requests to buy the Domain Name. The Second Respondent did not register the Domain Name to sell it or it would already be sold by now.
The Second Respondent’s main intended use for the Domain Name was for a personal web site with a blog to post and share his experiences with other enthusiasts for Porsche cars.
The Second Respondent’s contact details were exposed merely because his privacy registration expired.
Adding a zero in the word “p0rsche” does not make any word or sentence or relate to the noun “Porsche” and it does not harm anyone or any corporation. As long as he does not use the Domain Name the Second Respondent can keep the Domain Name.
The Domain Name does not receive any traffic. The links placed by the Registrar had nothing to do with the Second Respondent personally.
The letter finishes with “After all my intention is not to use this domain for sale or commercial purpose. If [the Complainant] wants this domain as he wrote in his first e mail contact to me in November 14, 2011, I am willing to discuss open options with him to transfer.”
Following this e-mails were exchanged between the parties where the Complainant offered USD 300 for the Domain Name and the Respondent said he would not accept such offer and requested an amount above USD 30,000.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
- The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the Domain Name; and
- The Domain Name has been registered and is being used in bad faith.
A. Identical and/or Confusingly Similar
The Domain Name consists of a sign highly similar to the Complainant's mark PORSCHE and the generic top-Level Domain (gTLD) “.com” with a number 0 instead of the letter “o”. The Domain Name is read naturally by the human eye as “porsche.com” and so is likely to be mistaken for the Complainant’s PORSCHE trade mark (the “.com” not being taken into account for the purposes of comparison between the Domain Name and a registered mark).
Accordingly, the Panel holds that the Domain Name is confusingly similar for the purposes of the Policy with a mark in which the Complainant has rights.
As such the Panel holds that paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
The Complainant has not given the Second Respondent permission to use its registered mark or a sign confusingly similar to it.
The Second Respondent does not appear to be commonly known by the Domain Name and does not contend that he is.
The Domain Name resolves to a parking page containing third party commercial links which is not a bona fide offer of goods and services nor legitimate noncommercial or fair use of the Domain Name. Whilst the Second Respondent says he did not organize this, he is responsible for the content at the Domain Name and has the power under his contract with the Registrar to make sure the links were not displayed (See paragraph 3.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0")).
Even on his own version of events the Second Respondent has not made any use of the name “p0rsche”. Further his contentions are inconsistent. At first he says the Domain Name has nothing to do with the Complainant, then he says it is to post private pictures of a PORSCHE vehicle he hopes to own one day and then he says it is for a blog with other car enthusiasts, but he has produced no evidence of any demonstrable preparations for this.
Finally, the Second Respondent appears to admit the Domain Name is supposed to read PORSCHE otherwise why would it be appropriate for anything bearing pictures of a PORSCHE, for example. Registering a misspelt version of a famous mark as a domain name is commonly known as typosquatting. Typosquatting has been widely held by UDRP panels not to be a bona fide use in relation to goods and services, nor a legitimate noncommercial or fair use of a name.
As such this Panel finds that the Respondents do not have rights or legitimate interests in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
C. Registration and Use in Bad Faith
With respect to the bad faith registration, the Second Respondent does not deny that he was aware of the Complainant and its rights when he registered the Domain Name.
Paragraph 4(b) of the Policy sets out four nonexclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including:
“circumstances indicating that [the Respondent has] registered or [has] 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 [its] documented out-of-pocket costs directly related to the domain name;” (paragraph 4(b)(i))
The Second Respondent has offered to sell the Domain Name to the Complainant for a sum in excess of USD 30,000 which far exceeds costs of registration. Whilst he denies the Domain Name was registered for sale to the Complainant his actions are not consistent with his words.
As discussed above, the Second Respondent in his contentions of intended use appears to admit the Domain Name is intended to be read as “porsche” by the human eye otherwise it is difficult to see the relevance of the Domain Name to what he says is its intended purpose. Typosquatting itself has been held widely by panels as evidence of relevant bad faith registration and use under paragraph 4(b)(iii) of the Policy.
Further, as discussed above, the Domain Name resolves to a parking page with third party commercial links, which is evidence of bad faith registration and use as per paragraph 4(b)(iv).
As such, the Panel holds that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under paragraph 4(b)(i), 4(b)(iii) and 4(b)(iv).
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 <p0rsche.com> be transferred to the Complainant.
Date: March 16, 2017