WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dr. Ing. h.c. F. Porsche AG v. Fundacion Private Whois
Case No. D2013-1533
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 Fundacion Private Whois of Panama, Panama.
2. The Domain Name and Registrar
The disputed domain name <porschedesignshoessale.com> is registered with Internet.bs Corp. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 30, 2013. On September 2, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 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.
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 September 11, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 1, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 2, 2013.
The Center appointed Mihaela Maravela as the sole panelist in this matter on October 9, 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 following facts have been asserted by the Complainant and not refuted by the Respondent. 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. It also owns numerous registered trademarks consisting of or incorporating the word “Porsche”. The trademark and trade name PORSCHE are known throughout the world and enjoy a reputation for high quality and excellent performance. The PORSCHE name is protected by trademark registrations in almost every country worldwide.
Besides manufacturing and distributing sports cars, the Complainant has exclusively licensed its trademark PORSCHE DESIGN to Porsche Design Management GmbH & Co KG, which is a company owned and operated by members of the Porsche family. Since 2005 Porsche Design Group has been entertaining a strategic partnership with Adidas Corporation based on which co-branded sneakers are produced and being sold worldwide through authorized shops. For this activity the Complainant registered also the PORSCHE DESIGN trademark.
The disputed domain name <porschedesignshoessale.com > was registered on September 18, 2012. The Respondent’s website at the time of rendering this decision redirects to an error page, and the only indication as to its former contents has been provided by the Complainant, as a print out of the screen of the website, filed with the Complaint.
No other information as to the Respondent, its services or activities, is available to the Panel, as the Respondent did not reply to the Complainant’s contentions.
5. Parties’ Contentions
The Complainant contends that the Respondent is known as an identity cloaking service operated by the Registrar who helps its customers to evade legal responsibility for the infringement of IP rights. Also, the Complainant contends that the true owner of the disputed domain name and customer of the Respondent is undoubtedly operating from China. The sneakers and other products offered on the website at the disputed domain name are typical Chinese counterfeit merchandise.
With regard to the requirement under paragraph 4 (a)(i) of the Policy, the Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trade name and trademarks PORSCHE and PORSCH DESIGN, embodied identically, just adding “shoes” and “sale” as descriptive element that indicate shop for PORSCHE DESIGN shoes.
With respect to the second requirement of the Policy, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Neither is there a use nor are there any preparations to use the disputed domain name with a bona fide offering of goods or services. The Complainant also asserts that there is not and has never been a business relationship between the parties and that the Respondent is not commonly known by the disputed domain name. Furthermore, the Complainant contends that the Respondent is not making noncommercial use of the disputed domain name, rather it redirects to a shopping website for counterfeit products.
The Complainant also contends that the Respondent has registered and uses the disputed domain name in bad faith because it benefits by misleading the public in order to sell counterfeit sneakers.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Notification of Proceedings to Respondent
Fundamental due process requirements must be met. Such requirements include that a respondent has notice of proceedings that may substantially affect its rights. The Policy, and the Rules, establish procedures intended to assure that respondents receive adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a), Rules).
Based on the methods employed to provide the Respondent with notice of the Complaint, the Respondent’s obligation under the registration agreement to maintain accurate and current contact information, the Panel is satisfied that the Center took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and initiation of these proceedings, and that the failure of the Respondent to submit a response is not due to any omission by the Center. See also Hoffmann-La Roche Inc. v. Samuel Teodorek, WIPO Case No. D2007-1814.
In view of the Respondent’s default in providing a response to the allegations of the Complainant, the Panel may decide this administrative proceeding on the basis of the Complaint (Rules, paragraph 14(a)). Pursuant to paragraph 14(b) of the Rules, the Panel will draw such inferences from the Respondent’s default as it considers appropriate and certain factual conclusions may be drawn by the Panel on the basis of the Complainant’s undisputed representations (Rules, paragraph 15(a)).
In order that the remedy requested in the Complaint is granted, paragraph 4(a) of the Policy requires that the Complainant prove each of the following:
i) that the disputed domain name is identical or confusingly similar to the mark in which it has rights;
ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name;
iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel must determine whether (a) the Complainant has a trademark or service mark; and (b) whether the disputed domain name is identical or confusingly similar to that trademark or service mark.
The Panel has verified, in accordance to the consensus view of previous UDRP panels (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, (“WIPO Overview 2.0”), paragraph 4.5.), the trademark registrations indicated by the Complainant in its Complaint and is satisfied that the Complainant is the owner of the PORSCHE and PORSCHE DESIGN registered trademarks, including inter alia:
- PORSCHE, International Registration No. 562572, registered on October 27, 1990;
- PORSCHE, International Registration No. 639048, registered on March 13, 1995;
- PORSCHE DESIGN, International Registration No. 456717, registered on July 29, 1980.
These registrations predate the registration of the disputed domain name, i.e. September 18, 2012.
As to the confusingly similar element for the purposes of the Policy, the Panel has proceeded to compare the disputed domain name to the Complainant’s trademark.
The disputed domain name <porschedesignshoessale.com> incorporates entirely the Complainant’s trademark PORSCHE, a trademark found in numerous UDRP decisions to be distinctive and well-known (see e.g. Dr. Ing. h.c. F. Porsche AG v. bian mu, WIPO Case No. D2013-1354; Dr. Ing. h.c. F. Porsche AG v. “Porsche, WIPO Case No. D2013-0623; Dr. Ing. h. c. F. Porsche AG v. Wei Xiao / Registration Private, WIPO Case No. D2012-0768; Dr. Ing. h.c. F. Porsche AG v. Zhao Ke, WIPO Case No. D2011-1913; F. Porsche AG v. GO 4 Travel International Kft., WIPO Case No. D2011-1725). The disputed domain name also incorporates entirely the Complainant’s trademark PORSCHE DESIGN.
The addition of the suffix “shoes sale” does not contribute distinctiveness to the disputed domain name. On the contrary, in this Panel’s view, it rather enhances confusion and the risk of association with the Complainant’s trademark, as the generic term “shoes sale” is regularly used in connection with sale of shoes.
The impression of the Internet users will be that the disputed domain name belongs to the Complainant or at least is connected to the Complainant and its services. Even in the latter case, it is the Panel’s view that such connection may be strengthened where the trademark is well-known.
Further, as to the addition of the generic top-level domain (gTLD) “.com”, this does not bear any relevance to the comparison at hand and has no impact on the overall impression made by the dominant part of the disputed domain name, “porsche design”.
The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant’s trademarks, therefore the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate a respondent’s rights or legitimate interests in a domain name:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable 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; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The consensus view of UDRP panels is that the burden of proof in establishing no rights or legitimate interests in respect of the domain name rests with the complainant in as far as making out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent (see WIPO Overview 2.0, paragraph 2.1.).
In the present case, the Complainant has established prima facie that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
By not submitting a response, the Respondent has failed to overturn such prima facie case.
Absent any response or defense by the Respondent, the Panel gives prevalence to the Complainant’s affirmation that no license or authorization was ever given to the Respondent to use the trademark PORSCHE (see Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055 on absence of license or permission excludes bona fide or legitimate use). Based on the record, there is no evidence of the Respondent’s use in connection with a bona fide offering of goods and services.
The Panel further finds that the Respondent is not commonly known by the disputed domain name, that it is not making legitimate, noncommercial or fair use of the disputed domain name, that it is not authorized by the Complainant to use the disputed domain name and that there is no other basis on which it could claim to have rights or legitimate interests in the disputed domain name in this case.
Finally, the evidence submitted by the Complainant as to the contents of the website before it was taken down which appear to represent a replica of the Complainant’s “www.porsche-design.com” website is indication of bad faith on the part of the Respondent.
Under these circumstances, the Panel finds that the Respondent registered the disputed domain name to profit from the Complainant’s trademark goodwill and reputation, which is incompatible with making a legitimate, noncommercial or fair use of the disputed domain name.
The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
To fulfill the third requirement, the Complainant must prove that the disputed domain name was registered and is being used in bad faith.
In order to assess whether the Respondent registered and uses the disputed domain name in bad faith, paragraph 4(b) of the Policy provides examples constituting evidence of bad faith.
While the examples are indicative (see Nova Banka v. Iris, WIPO Case No. D2003-0366), paragraph 4(b)(iv) of the Policy has direct bearing to the present case:
“(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to his website or other on line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the said website location or of a product or service on that website location.”
The print screen submitted by the Complainant as evidence showing that the Respondent replicated the contents of the Complainant’s website “www.porsche-design.com” on its website is in itself in this Panel’s view sufficient proof of registration in bad faith, with the intention of creating confusion with the Complainant’s genuine services for commercial gain.
As noted above, the trademark PORSCHE is well-known. Therefore, the Respondent is most likely to have known of the Complainant, its products and trademarks prior to registering the disputed domain name. Also, the Respondent registered the disputed domain name more than 30 years after the Complainant registered its trademarks.
As regards the use of the disputed domain name at the time of lodging the Complaint, the mere fact that content had been taken down and the website rendered inactive, while the disputed domain name continues to be held by the Respondent, cannot lead the Panel to dismissing the Complaint for failure to satisfy the requirement under paragraph 4(a)(iii) of the Policy.
The passive holding of a domain name following its bad faith registration can satisfy the requirements of paragraph 4(a)(iii) of the Policy if the circumstances of respondent’s behavior are indicative of bad faith (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
The Panel is of the opinion that any possibly contemplated use of the disputed domain name would most likely amount to passing off, given the confusing similarity with the Complainant’s trademark and associated services.
Additional factors retained by the Panel as indicative of bad faith registration and use of the disputed domain name include:
- the Respondent’s failure to respond to the Complaint and provide any evidence of bona fide registration and use (see Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications, WIPO Case No. D2001-0210);
- the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name,
- any use of the disputed domain name would most likely lead the public to the conclusion that it, and its connecting website, is associated with the Complainant,
- the existence of more than fifty previous UDRP decisions involving the Respondent, with similar factual background and where it was found that the respondent registered and used the relevant disputed domain name in bad faith (see, inter alia, WordPress Foundation v. Fundacion Private Whois, Domain Administrator, WIPO Case No. D2013-1427; Apple Inc. v. Stanley Pace (a.k.a. Jordan Smith, Chris Carter, sunhei.org, Keith Besterson, Shahamat, Staci Michele and Courtney Culbertson) and Fundacion Private Whois, WIPO Case No. D2013-1313; Assa Abloy AB v. Fundacion Private Whois, WIPO Case No. D2013-0871; Take-Two Interactive Software, Inc. v. Fundacion Private Whois, WIPO Case No. D2013-0586; Brown Brothers Harriman & Co. v. Fundacion Private WhoIs, WIPO Case No. D2013-0524),
- the Respondent appears to have engaged in a pattern of conduct of registering domain names comprising the trademarks of third party brand owners, without the authorization or approval of the brand owners, in order to profit by attracting users to websites which offer for sale unauthorized branded goods (this was also held in Dr. Ing. h.c. F. Porsche AG v. Patricio Quezada, WIPO Case No. D2013-0557),
- also, as noted above, the Panel has concluded that the Respondent had knowledge of the Complainant’s trademarks at the time of registration of the disputed domain name. The Respondent provided no explanations for which it registered the disputed domain name,
- lastly, the Respondent appears to use some sort of “Privacy Protection” service, which may further support in the circumstances of this case the Panel’s finding of bad faith (this was also held in Assa Abloy AB v. Fundacion Private Whois, WIPO Case No. D2013-0871).
Therefore, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith.
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 <porschedesignshoessale.com> be transferred to the Complainant.
Date: October 23, 2013