WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dr. Ing, h.c. F. Porsche AG, v. Moniker Privacy Services / Sergey Korshunov
Case No. D2011-0100
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 Moniker Privacy Services / Sergey Korshunov of Pompano Beach, Florida, the United States of America and Sakhalin, Russian Federation, respectively.
2. The Domain Name and Registrar
The disputed domain name <порше.com> <xn--e1arcf4b.com> is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 18, 2011. On January 18, 2011, the Center transmitted by email to Moniker Online Services LLC. a request for registrar verification in connection with the disputed domain name. On January 20, 2011, Moniker Online Services, LLC. transmitted by email to the Center disclosing registrant and contact information for the disputed 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 27, 2011 providing the registrant and contact information disclosed by the Moniker Online Services, LLC., and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on February 2, 2011.
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 February 18, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 10, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 11, 2011.
The Center appointed James A. Barker as the sole panelist in this matter on March 18, 2011. 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.
In accordance with paragraph 10 and 12 of the Rules, on April 4, 2011, the Panel extended the due date for decision until April 8, 2011.
4. Factual Background
The disputed domain name, <порше.com>, or <xn--e1arcf4b.com> in “punycode”, is an internationalized domain name (IDN). Relevantly represented in Cyrillic, the disputed domain name, in Latin script, translates as “porsche”. An IDN is a domain name that contains non-Latin characters. To display those characters, each component of the domain name that is not in ASCII characters is encoded by a scheme such as punycode. (ASCII stands for the American Standard Code for Information Interchange. The ASCII code is the numerical representation of a character such as “a”, and includes representations for each letter of the English alphabet.)
The Complainant is a manufacturer of sports cars and uses the mark PORSCHE in that connection. The Complainant provided evidence of a number of registrations dating from as far back as 1953. The Complainant also provides evidence of a number of its international marks which give it priority in a number of jurisdictions, including the Russian Federation (which, as the proponent says, is the “main country where Cryillic letters are in use”). The Complainant’s PORSCHE mark is known world-wide in connection with sports cars. The Complainant does not own a Cyrillic trademark, but rather a large number of non-Cyrillic trademarks that are protected in Cyrillic-using countries such as the Russian Federation.
The Complainant operates its principal website at “www.porsche.com”. That URL operates as an umbrella for a number of sections that are devoted to certain countries or regions. At “www.porsche.com/russia/ the Complainant provides information to customers from the Russian Federation, including the details on its dealerships around the country.
The Complainant provides evidence that, as at January 18, 2011, the disputed domain name reverted to a “parking” website where sponsored links were on display. That website promoted third party goods and services including cars from competitors of the Complainant and consumer goods competing with products (e.g., suitcases) of a kind to which the Complainant’s mark is also applied. That website also contains a series of links to the Complainant’s cars (e.g., links titled “Porsche Design + TOP+”).
The Complainant has previously been the complainant in a large number of cases under the Policy, concerning its PORSCHE mark. In the great majority of those cases, the Complainant has been successful. More recently, see, e.g., Dr. Ing. h.c. F. Porsche v. Georg Kohler, WIPO Case No. DME2008-0002; Dr. Ing. h.c. F. Porsche AG v. no, WIPO Case No. D2010-0517; Dr. Ing. h.c. F. Porsche AG v. Direct Privacy ID, WIPO Case No. D2010-0012. Those cases have also recognized the Complainant’s rights in its mark.
The disputed domain name has a “creation date” of July 7, 2006, as confirmed by the Registrar, Moniker Online Services LLC.
5. Parties’ Contentions
The Complainant states that the Respondent is a privacy service, which serves as a cloak for customers who prefer to remain anonymous.
The Complainant says that the disputed domain name is confusingly similar to its PORSCHE mark. The Complainant says that it is universally accepted that IDN domain names in punycode and non-ASCII transliterations are treated as equivalents. The Complainant refers to Yahoo! Inc. v. Sergey Korshunov, NAF Claim No. 1176666, in which the then panel stated that:
“In the past, panels have found IDNs and their Punycode translations to be equivalent. See Damien Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding an internationalized domain name, <têtu.com>, and its Punycode translation, <xn--ttu-fma.com>, to be one and the same under the Policy); see also Württembergische Versicherung AG v. Emir Ulu, D2006-0278 (WIPO May 4, 2006) (finding that the <xn--wrttembergische-versicherung-16c.com> should be considered as equivalent to the <württembergische-versicherung.com> domain name, based on previous panel decisions recognizing the relevance of I-nav software for translating German letters such as “ä” or “ü” into codes such as <xn--[name]-16c> and similar); see also Fujitsu Ltd. v. tete and Lianqiu Li, D2006-0885 (WIPO October 12, 2006) (finding the <xn--zqsv0e014e.com> domain name to be an exact reproduction of Complainant’s Chinese trademark in a domain name).”
In that latter case, the panel found that the domain name then in dispute was one and the same with its punycode translation. The Complainant also refers to a series of cases where a non-ASCII trademark was found to be confusingly similar to an IDN domain name if the trademark is widely known and at least phonetically similar to the disputed domain name.
Secondly, the Complainant says that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant says that the Respondent has made no preparations to use the disputed domain name in connection with a bona fide offering of goods or services. There has never been any business relationship between the parties. The Respondent is not commonly known by the disputed domain name.
Thirdly, the Complainant says that the Respondent has registered and used the disputed domain name in bad faith. The Complainant says that there are no conceivable circumstances in which the Respondent could have acted in good faith. The Respondent was aware of the Complainant’s mark as it is using it in connection with advertisements for cars. UDRP panels unanimously agree that the use of a domain name for a parking website with sponsored links must be regarded as a clear sign of bad faith.
The Respondent did not reply to the Complainant’s contentions.
However, the Respondent sent the following email to the Center on February 12, 2011, which was also copied to the Complainant:
“To prevent a time spent and superfluous paper work, I can transfer the subject domain to a TM owner. Have registered it in bulk and I assumed a possibility of a tm issue as I have not been ability to check for a tm contradiction. Please send a proof that you have a irrefutable rights for the tm and transfer will be completed.”
(In response to that email, the Center sent an email to the Complainant inviting the Complainant to consider a suspension of the proceedings pending settlement. The Complainant did not however request a suspension to the proceedings.)
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
These elements are discussed as follows.
A. Identical or Confusingly Similar
There is no dispute that the Complainant relevantly has rights in its PORSCHE mark in various jurisdictions. The Complainant admits that it does not have a registered Cyrillic mark equivalent. Therefore the principal issue in this case is whether the disputed domain name, represented in Cyrillic script, is confusingly similar to the Complainant’s PORSCHE mark. As the domain name is represented in Cyrillic script, it is not identical to the Complainant’s mark.
The Complainant has demonstrated that the disputed domain name is an exact transcription of the lettering of its trademark. The Complainant points to previous decisions under the Policy which found IDNs and their punycode translations to be equivalent for the purpose of determining confusing similarity. In particular, the Complainant refers to FUJITSU LIMITED. v. tete and Lianqiu Li, WIPO Case No. D2006-0885. However in that case, the Complainant owned registered marks for both ASCII and ‘non-ASCII’ (IDN-represented) marks: being the marks FUJITSU and 富士通 respectively. The Complainant in this case does not own a ‘non-ASCII’ mark.
The Complainant refers to Yahoo! Inc. v. Sergey Korshunov, NAF Claim No. 1176666. However in that case, the then complainant was the registrant of a trademark which included three Cyrillic letters which were a phonetic equivalent of the ASCII component of its mark. The then panel found that there was confusing similarity as the domain name contained a portion of the then complainant’s mark (i.e. the Cyrillic component of the mark). In this case, the Complainant’s mark does not include Cyrillic lettering, in whole or part.
The Complainant also refers to Seiko Epson Corporation and Epson America, Inc. v. Chiu Tien Fu and Tien Fu Chiu, NAF Claim No. 1314017. In that case, the then panel found that a non-ASCII domain name (<爱 普 生.com>) was identical to its ASCII “transliteration” (EPSON). However, this Panel can find no reasoning in that case for this conclusion. Neither is there an explanation as to how a combination of three Chinese / Kanji characters can, phonetically or otherwise, be identical to a mark represented in Latin script. In this Panel’s view, it is one thing to find that a non-ASCII domain name is equivalent to its punycode. It is another thing to find that a non-ASCII domain name is equivalent to an ASCII mark (i.e., a mark represented in Latin script).
The Complainant’s argument in this case is that the non-ASCII domain name in dispute is equivalent to its ASCII mark. The Complainant argues that the Cyrillic (non-ASCII) equivalent of its mark is confusingly similar to its mark. The Complainant does not own registrations in the Cyrillic script. In effect, the Complainant argues that this does not matter.
The Panel nevertheless finds that the disputed domain name is confusingly similar to the Complainant’s well-known mark. The reason for this is based on first principles. Under paragraph 4(a)(i) of the Policy, the issue is whether there is a likelihood of confusion in the mind of Internet users. As noted by the panel in Mejeriforeningen Danish Dairy Board v. Cykon Technology Limited, WIPO Case No. D2010-0776, the question “is simply whether the alphanumeric string comprising the disputed domain name is identical to the Complainant's mark or sufficiently approximates it, visually or phonetically, so that the disputed domain name on its face is “confusingly similar” to the Complainant’s mark. Initial confusion by an Internet user when seeing or typing the disputed domain name is the focus of paragraph 4(a)(i).”
In this case, the disputed domain name is not visually similar or identical to the Complainant’s mark. The Complainant claims that the disputed domain name is phonetically similar to its mark. However, in the Panel’s view, it does not follow from the Complainant’s evidence that the disputed domain name transcribes the sound of its mark in Cyrillic. Is it, for example, phonetically similar in Russian to the way its mark would sound in German or English? The Complainant does not say. Regardless, the Complainant provided evidence that the disputed domain name is a transliteration of its PORSCHE mark. The Complainant’s mark is very well-known, and this is recognized in a series of prior decisions under the Policy in the Complainant’s favor (including those cited above). The number of prior cases under the Policy involving the Complainant’s mark is itself an indication that the Complainant is an attractive target for cybersquatters.
The fame of the Complainant’s mark, combined with its transliteration in the disputed domain name, suggests to the Panel that the domain name would create confusion in the minds of Internet users that might be searching for the Complainant. There was no evidence in this case that, represented in Cyrillic, the disputed domain name has any association other than with the Complainant’s mark. As such, the Panel has inferred that an ordinary Internet user reading the domain name in Cyrillic, would be likely to associate it with the Complainant’s mark. The circumstances of this case therefore indicate that Internet users would be confused about the relationship between the disputed domain name and the Complainant’s mark. Ultimately, the focus of paragraph 4(a)(i) of the Policy relates to confusion over the association of the disputed domain name with the Complainant’s mark. Phonetic or visual similarity may be factual indicators of such confusion. There may be other facts which suggest a likelihood of confusion. The Panel considers that the relevant facts of this case are suggestive of such confusion.
For these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
As noted in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions Second edition (“WIPO Overview 2. 0”), paragraph 2.1, the burden is on the Complainant to establish the absence of the respondent’s rights or legitimate interests in the disputed domain name. However, because of the inherent difficulties in proving a negative, the consensus view is that a complainant need only put forward a prima facie case that the respondent lacks rights or legitimate interests. The burden then shifts to the Respondent to rebut that prima facie case (see also, e.g., World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306.)
The Complainant has made a prima facie case against the Respondent. The Respondent submitted no response. The only communication from the Respondent suggests that the Respondent accepts that he lacks rights or legitimate interests. The Respondent noted that he “assumed an possibility of a tm” when he registered the dispute domain name. There is nothing the content of the website to which the disputed domain name directs that suggests the Respondent has rights or legitimate interests. That website merely consists of a parking website, including links to the Complainant’s products or products that compete with those of the Complainant. This is not suggestive of a bona fide use.
For these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
As noted above, the Complainant’s mark is well-known. The disputed domain name is an exact transliteration, in Cyrillic, of that mark. The Respondent himself admits that he had assumed it was possible that his registration would raise trademark issues. In the Panel’s view, this suggests it was unlikely that the disputed domain name’s similarity with the Complainant’s mark was accidental.
The Respondent has also used the disputed domain name in connection with a “click through” or landing website. That website offers commercial goods. It is a site that would appear to operate for commercial gain. As such, the Respondent has attempted to attract for commercial gain, Internet users to his website by creating a likelihood of confusion regarding the source, sponsorship, affiliation or endorsement of the dispute domain name. Under the Policy, such circumstances are indicative of bad faith registration and use. See, e.g., Compart AG v. Compart.com / Vertical Axis, Inc., WIPO Case No. D2009-0462.
The Panel therefore finds that the Complainant has established its case under paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <порше.com> <xn--e1arcf4b.com> be transferred to the Complainant.
James A. Barker
Dated: April 8, 2011