WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dr. lng. h.c. F. Porsche AG v. Su Jin / sujin
Case No. D2013-1175
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 Su Jin / sujin of Woodbridge, Virginia, United States of America.
2. The Domain Name and Registrar
The disputed domain name <porschedesign2013.com> is registered with Key-Systems GmbH dba domaindiscount24.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 1, 2013. On July 1, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 3, 2013, 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. On July 3, 2013, the Center transmitted an email to the parties in both Chinese and English language regarding the language of the proceeding. On July 4, 2013, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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 July 10, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 30, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 31, 2013.
The Center appointed C. K. Kwong as the sole panelist in this matter on August 12, 2013. 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 the owner of numerous trademarks consisting of or comprising the word PORSCHE or the words PORSCHE DESIGN. These registrations include:
- International Trademark Registration No. 639048 for the word PORSCHE registered on March 13, 1995 with an extension to China in respect of, inter alia, clothing, including footwear in Class 25 (Annex 5 to the Complaint].
- International Trademark Registration No. 456717 for the words PORSCHE DESIGN registered on July 29, 1980 with an extension to China and the United States in respect of, inter alia, clothing, including boots, shoes and slippers in Class 25 (Annex 6 to the Complaint).
- European Community Trademark Registration No. 000073098 for the mark PORSCHE registered on December 12, 2000 in respect of, inter alia, clothing footwear, headgear in Class 25 (Annex 22 to the Complaint).
The uncontradicted evidence produced by the Complainant shows that the registration of its aforesaid PORSCHE and PORSCHE DESIGN marks occurred many years before the registration of the disputed domain name <porschedesign2013.com> on April 16, 2013.
Other than the particulars shown on the printout of the data base searches conducted by the Complainant of the WhoIs database (as provided in Annex 1 to the Complaint), the website to which the disputed domain name resolves as provided in Annex 24 to the Complaint, the WhoIs database search results and the website visit record updated to July 10, 2013 provided by the Center, there is no evidence in the case file concerning the background of the Respondent and its business.
5. Parties’ Contentions
The Complainant has made the following contentions:
The Complainant has rights in the trademarks PORSCHE and PORSCHE DESIGN. The Complainant has been making sports cars for more than 70 years under the brand PORSCHE which is known throughout the world enjoying the reputation of high quality and performance. It operates a website at “ www.porsche.com” and distributes its cars through a worldwide network of official dealers.
The Complainant has exclusively licensed its trademark PORSCHE DESIGN to Porsche Design Management GmbH & Co. AG which is owned by and operated by members of the Porsche Family and claims to be a leading and prestigious designer and producer of high quality consumer products including shoes and sneakers. It operates a website at “www.porsche-design.com”.
The Porsche Design Group has established and maintained a strategic partnership with Adidas Corporation producing sneakers which are being sold worldwide through authorized shops.
The disputed domain name is confusing similar to the trademarks PORSCHE and PORSCHE DESIGN with merely an addition of the numbers 2013 which is descriptive of the current year and an indication of its up to date contents.
The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not commonly known by the disputed domain name. It is not making noncommercial use of the disputed domain name but using it to redirect consumers to a shopping website for counterfeit products. There is neither use nor preparations for use with a bona fide offering of goods or services by the Respondent.
The Respondent is seeking to hide its identity and whereabouts. The United States address provided is fake as there is no “Paxon Street” in Woodbridge and no house number is given. The international calling code “+57” is for Colombia instead of the United States. Generally, there are no details in the WhoIs register that could be traced back to an individual or business entity.
The Respondent has registered and used the disputed domain name in bad faith. The public is misled into buying counterfeit sneakers.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Notice of Proceedings
The contact particulars of the Respondent and the disputed domain name were fully set out in the WhoIs search results provided in Annex 1 to the Complaint and the WhoIs search results updated to July 10, 2013 as provided by the Center.
Such contact details also concur with those provided by the Registrar to the Center on July 3, 2013.
On July 10, 2013, the Center forwarded the Notification of Complaint and Commencement of Administrative Proceeding to the Respondent in accordance with the contact details above by email with copies to the Registrar. The Center also forwarded the Written Notice to the Respondent by courier and facsimile.
The Panel finds that as long as the Complainant or the Center as the case may be has communicated with the Respondent using the contact information which the Respondent has chosen to provide to the Registrar as reflected in the above contact details, their respective obligations of such communications will be discharged and the Respondent is bound accordingly.
The Panel is satisfied that the Center has discharged its responsibility under paragraph 2(a) of the Rules to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint and that the failure of the Respondent to furnish a reply is not due to any omission or inadequate communication by the Center.
B. Language of Proceedings
In response to the Center’s notification in English and Chinese of July 3, 2013 to both parties on the language of proceeding, the Complainant confirmed its request that English be used as the language of this administrative proceeding in paragraph 10 of the Complaint under Section IV and added 2 more reasons on July 4, 2013. The Respondent did not object or make any comments on the Complainant’s submissions by the timeline of July 8, 2013.
Paragraph 11(a) of the Rules provides:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.
The language of the Registration Agreement for the disputed domain name is Chinese.
In support of its request, the Complainant has inter alia argued that:
(a) The language of the Registrar’s registration agreement is in English;
(b) The purported postal address of the Respondent is in the United States;
(c) The Complainant is a German company and not familiar with the Chinese language. It would be burdensome for it to conduct proceedings in Chinese;
(d) The Respondent is familiar with English as demonstrated by the English used on the website to which the disputed domain name resolves;
(e) The Respondent is apparently a resident in the United States and therefore it should be familiar with the language in the United States.
While the Panel does not agree with the Complainant’s arguments (a) that the language of the Registrar’s registration agreement is in English as the Registrar has confirmed to the Center that the registration agreement as used by the Registrant for the disputed domain name is in Chinese and (b) that the Complainant would be severely burdened if it has to conduct the proceedings in the Chinese language because of the substantial legal and language resources it should have as a sophisticated multi-national corporation with considerable disposure in China, the Panel has taken into consideration that:
(i) The Respondent is apparently familiar with and conversant in English, as reflected in the content of the website to which the disputed domain name resolves being entirely in English and designed for English speaking customers.
(ii) The disputed domain name consists of letters from the English alphabet; and
(iii) The Respondent has provided contact details to the Registrar in English.
In exercising its discretion to use the language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties taking into account all relevant circumstances of the case including matters such as the parties abilities to understand and use of the proposed language, time and costs (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004 also Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432).
Taking all circumstances into account and in the absence of objections from the Respondent even after the Notification of Respondent Default as aforesaid, the Panel is satisfied that there is no prejudice or unfairness to the Respondent for these proceedings to be conducted in English and for its decision to be rendered in English. Accordingly, the Panel determines that the language of this administrative proceeding should be English.
C. The Three Elements
In rendering its decision, the Panel must adjudicate the dispute in accordance with paragraph 15(a) of the Rules which provides that, “[t]he Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 14(b) of the Rules further provides that, “[i]f a Party, in the absence of exceptional circumstances, does not comply with any provisions of, or requirement under these Rules or any requests from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate”. Paragraph 5(e) of the Rules further provides that, “[i]f a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint”.
The failure of the Respondent to respond does not automatically result in a favourable decision to the Complainant, which is specifically required under paragraph 4(a) of the Policy to establish each of the three elements as provided therein. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064 and Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465.
The said three elements are considered below.
1. Identical or Confusingly Similar
On the evidence available it, the Panel has no hesitation in finding that the Complainant has rights in both trademarks PORSCHE and PORSCHE DESIGN by reason of its trademark registrations as recited in Section 4 above.
Furthermore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks PORSCHE and PORSCHE DESIGN despite the addition of the number 2013 which is merely descriptive of the current year.
The distinctive feature of the disputed domain is “porsche design”, being the Complainant’s trademark in its entirety. The mere addition of the numerals “2013” does not assist in distinguishing the disputed domain name from the Complainant’s mark.
It is well established practice to disregard the top-level part of the domain name “.com”, when assessing whether a domain name is identical or confusingly similar to the mark in issue. Société Anonyme des Eaux Minerales d’Evian and Societe des Eaux de Volvic v. Beroca Holdings B.V.I. Limited, WIPO Case No. D2008-0416.
After removing the said descriptive element “2013” and the generic top-level domain, only the words “PORSCHE DESIGN” are left in their entirety.
Accordingly, the Panel finds that the first element of paragraph 4(a) of the Policy is established.
2. Rights or Legitimate Interests
The Complainant needs to establish a prima facie case showing that the Respondent has no rights or legitimate interests in respect of the disputed domain name. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. Once such prima facie case is made, the burden will shift to the Respondent to prove that it has rights or legitimate interests in the disputed domain name.
In the present case, the Complainant has asserted registration and use of the registered trademark PORSCHE DESIGN well before the Respondent’s registration of the disputed domain name <porschedesign2013.com> on April 16, 2013. The Complainant has confirmed that it has no business relationship with the Respondent.
There is no explanation on the record as to why it was necessary for the Respondent to adopt the words “PORSCHE DESIGN” in its domain name.
There is also no evidence before the Panel to suggest that the Respondent is commonly known as <porschedesign2013.com>.
There is also no evidence available to demonstrate any legitimate noncommercial or fair use of the disputed domain name by the Respondent.
Even assuming for the purpose of argument, that the goods sold on the website to which the disputed domain name resolves are genuine PORSCHE DESIGN goods, it does not provide in this Panel’s view the owner of the disputed domain name the right to use the Complainant’s trademark and materials on that website. Sanofi-Aventis v. DomainsByProxy.com and Ravikant Singh, WIPO Case No. D2007-0540. See also paragraph 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), “without express authority of the relevant trademark holder, a right to resell or distribute that trademark holder’s products does not create a right to use a domain name that is identical, confusingly similar, or otherwise wholly incorporates the relevant trademark”.
The Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name.
3. Registered and Used in Bad Faith
The printout of the website at the disputed domain name as shown in Annex 24 to the Complaint shows prominent references to the Complainant’s licensee PORSCHE DESIGN Group in the font customarily used by it and products described with the words Adidas Porsche Design which are products designed and manufactured under the partnership between the Porsche Design Group and Adidas Corporation.
The choice of the words “porsche design” in its entirety as part of the disputed domain name without any explanation as well as the offering of shoes described as Adidas Porsche Design in the website to which the disputed domain name resolves, demonstrate the Respondent’s knowledge of the Complainant and its trademark at the time of registration and use of the disputed domain name. Furthermore, subsequent investigations and postal problems showed that the address of Paxon Street provided by the Respondent to the Registrar as its contact address and the telephone number provided as contact particulars are inaccurate and cannot reach the Respondent. These may be considered as indications of bad faith.
The Complainant has made the serious allegation that the goods offered for sale via the website to which the disputed domain name resolves are counterfeit goods. The Respondent has not come forward to offer any reply. The Panel finds that the Respondent has registered the disputed domain name and allowed the operator of the website to which the disputed domain name resolves, to use it primary for offering goods to Internet users in a way which disrupts the business of the Complainant. On the basis of the evidence produced, the Panel finds that the presumption under paragraph 4(b)(iii) of the Policy has been invoked.
By using, whether directly or indirectly, authorizing or permitting the use of the disputed domain name by the operator of the said website in the manner described above, the Respondent intentionally attempted to attract, for commercial gain, Internet users to go to the said website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affliction, or endorsement of the website or products on the website. The Panel accordingly finds that paragraph 4(b)(iv) of the Policy has also been invoked.
The Panel finds that the disputed domain name has been registered and is being used in bad faith under paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <porschedesign2013.com> be transferred to the Complainant.
C. K. Kwong
Date: August 26, 2013