WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Dr. Ing. h.c. F. Porsche AG v. İrfan Akbulut

Case No. D2011-1968

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 İrfan Akbulut of Istanbul, Turkey.

2. The Domain Name and Registrar

The disputed domain name <porscheapproved.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 9, 2011. On November 9, 2011, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name. On November 9, 2011, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com 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”).

On November 10, 2011, the Complainant sent to the Center a copy of the Respondent’s email communication to the Complainant dated November 10, 2011, where the Respondent, apparently, expressed its readiness to transfer the disputed domain name to the Complainant.

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 November 16, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 6, 2011.

On November 16, 2011, after the formal notification of the Complaint, the Center received four email communications from the Respondent which included the above-mentioned email communication of November 10, 2011 as well as email communication between, apparently, the Respondent and the Registrar. On November 17, 2011, the Complainant sent to the Center copies of two email communications sent to the Respondent where it, the Complainant, requested the Respondent to transfer the disputed domain name. On November 17, 2011, the Respondent sent another email communication to the Center where it agreed to transfer the disputed domain name to the Complainant. Under these circumstances, the Complainant requested for suspension of the proceeding to find an amicable solution to the dispute on November 17, 2011. Further to the Complainant’s request, the Center suspended the proceeding on November 18, 2011 till December 18, 2011.

On December 20, 2011, the Complainant requested re-institution of the proceeding due to the fact that the transfer had not taken place. Further to the Complainant’s request, the Center re-instituted the proceeding as of December 22, 2011 and the new Response due date was set for January 9, 2012. The Respondent did not submit any Response. Accordingly, the Center notified the parties of the commencement of panel appointment process on January 11, 2012.

The Center appointed Johan Sjöbeck as the sole panelist in this matter on January 18, 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 submitted evidence that it is the owner of numerous trademarks, registered throughout the world, consisting of or containing the mark PORSCHE, including (among many others) United States Trademark Registration No. 0618933 for PORSCHE, registered on January 10, 1956 and Turkish Trademark Registration No. 459706 for PORSCHE, registered on February 24, 1981.

The Respondent registered the disputed domain name on March 3, 2011.

5. Parties’ Contentions

A. Complainant

The Complainant has been a maker of sports cars for more than 70 years, utilizing “Porsche” as the prominent and distinctive part in its trade name. The Complainant owns numerous registered trademarks consisting of or incorporating the word “Porsche”. The PORSCHE trademark is registered in almost every country in the world, including Turkey. PORSCHE is known throughout the world and enjoys a reputation for high quality and outstanding performance.

The Complainant’s cars are distributed through a network of official dealers. The Complainant operates its website at “www.porsche.com” and uses the term “Porsche Approved” for a warranty program where pre-owned cars are officially factory tested and repaired.

The Complainant has not been able to find any information about the Respondent, other than the information found in the WhoIs database. On October 10, 2011, the Complainant contacted the Respondent via e-mail and requested that the Respondent would transfer the disputed domain name to the Complainant. The Respondent did not react.

The disputed domain name has never been used or directed to a website. It is confusingly similar to the Complainant’s trade name and trademark PORSCHE. The addition of the word “approved” only serves to describe the Complainant’s program where used cars are tested.

The Respondent has no right or legitimate interest in the disputed domain name. There is neither use nor any preparations to use the disputed domain name with a bona fide offering of goods or services. There is no, and has never been, any business relationship between the parties. The Respondent is not commonly known by the disputed domain name. The Respondent is not making a noncommercial use of the disputed domain name.

The Respondent has registered and uses the disputed domain name in bad faith. Although the disputed domain name is not actually used, non-use can still constitute a use in bad faith. Under no conceivable circumstances, the Respondent could have acted in good faith. The Respondent has no legitimate interest in registering and using a domain name that so closely resembles a well-known and prestigious trademark.

A legitimate use of the disputed domain name cannot reasonably be imagined as the public will, by the domain name itself, always be misled to expect a website where the Complainant would offer used cars or have information regarding the Complainant’s “Porsche Approved” program. The Respondent registered the disputed domain name to sell it to the Complainant for a price exceeding the registration costs or to attract, for commercial gain, Internet users to the Respondent’s website.

B. Respondent

The Respondent did not formally reply to the Complainant’s contentions. The Respondent did however, in its email communication to the Center, express consent to the relief requested by the Complainant.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant is, according to the submitted evidence, the owner of a large number of trademark registrations for PORSCHE in various countries, including Turkey where the Respondent is domiciled. The disputed domain name incorporates the Complainant’s trademark PORSCHE in its entirety with the addition of the English generic word “approved”. The Panel agrees with the Complainant’s contention that the ability for such a generic word to distinguish the disputed domain name from the trademark of the Complainant is very limited. In fact, the addition of the word “approved” may actually add to the confusion and similarity between the disputed domain name and the trademark as Internet users may believe that the Complainant has approved the Respondent’s use of the trademark or that the disputed domain name is directly or indirectly operated by the Complainant as part of its used car program with the same name.

Having the above in mind, it is the opinion of this Panel that the disputed domain name is confusingly similar to the Complainant’s trademark and that the Complainant has proved the requirements under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests with respect to the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

(i) that it has made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services prior to the dispute; or

(ii) that it is commonly known by the domain name, even if it has not acquired any trademark rights; or

(iii) that it intends to make a legitimate, noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

The Complainant’s trademark registrations for PORSCHE predate the Respondent’s registration of the disputed domain name. The Complainant has not licensed, approved or in any way consented to the Respondent’s use of the trademark in the disputed domain name.

Although the Respondent did not formally reply to the Complainant’s contentions, the Respondent did send several email communications to the Center consenting to transfer the disputed domain name to the Complainant. As a result of the Respondent’s communications, the administrative proceeding was suspended from November 18, 2011 until December 18, 2011. The disputed domain name was not, however, transferred to the Complainant during this period and therefore the administrative proceeding was re-instituted on December 22, 2011.

Despite the given opportunity, the Respondent has not submitted any evidence indicating that the Respondent is the owner of any trademark rights similar to the disputed domain name or that the Respondent is or has been commonly known by the disputed domain name. The absence of rights or legitimate interests in respect of the disputed domain name is supported by the Respondent’s email communications to the Center in which the Respondent consented to transfer the disputed domain to the Complainant.

Considering the above, the Respondent has failed to invoke any circumstances which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in respect of the disputed domain name. There is no evidence from the Respondent refuting the Complainant’s submissions, and the Panel concludes that the Complainant has also proved the requirement under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include without limitation:

(i) circumstances indicating that the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the domain name were registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided it is a pattern of such conduct; or

(iii) circumstances indicating that the domain name was registered primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the domain name has intentionally been used in an attempted to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with a trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on a website or location.

As mentioned above, the Complainant’s registered PORSCHE trademarks predate the registration of the disputed domain name. It has been argued by the Complainant that the Respondent knew or must have known about the Complainant’s trademarks when registering the disputed domain name, especially due to the fact that the Respondent combined the registered trademark PORSCHE with the English generic term “approved”, which corresponds to the exact term used by the Complainant for its warranty program for pre-owned Porsche cars. The Complainant has submitted evidence demonstrating that its warranty program for pre-owned vehicles is called “Porsche Approved”. Thus, the combination of the registered trademark PORSCHE and the generic term “approved” exactly matches the term under which the Complainant markets its warranty program. The Panel is of the opinion that the circumstances of the case indicate that the Respondent was aware of the Complainant’s trademark PORSCHE when the Respondent registered the disputed domain name.

The evidence submitted by the Complainant indicates that the disputed domain name did not resolve to any active website and that the Respondent did not make any legitimate use of the disputed domain name. Furthermore, the Panel finds the Respondent’s actions during the suspension of the administrative proceeding to be further suggestive of bad faith. The Respondent sent several email communications to the Center stating that it was willing to transfer the disputed domain name to the Complainant. As a result of the Respondent’s email communications, the proceeding was suspended so that the parties could pursue settlement amicably. However, the Respondent apparently did not follow through on its offer to transfer the disputed domain name to the Complainant during the suspension of the proceeding. As a result, the Respondent’s alleged offer to transfer the disputed domain name only resulted in a delay in the administrative proceeding. Based on the circumstances above and the evidence in this particular case, the Panel finds that the Respondent’s passive holding of the disputed domain name indicates bad faith. As stated in the decision in Telstra Corporation Ltd. vs Nuclear Marshmellows, WIPO Case No. D2000-0003 and confirmed in subsequent decisions, ““being used in bad faith” is not limited only to positive action as inaction is within the concept”. Furthermore, as expressed in paragraph 3.2 in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), passive holding as such does not prevent a finding of bad faith.

There is no evidence in the case that refute the Complainant’s submissions.

The Panel concludes that the Complainant has proved the requirements under paragraph 4(b) of the Policy and that the domain name <porscheapproved.com> has been registered and used in bad faith.

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 <porscheapproved.com> be transferred to the Complainant.

Johan Sjöbeck
Sole Panelist
Dated: February 1, 2012