WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Dr. Ing. h.c. F. Porsche AG v. Whois Agent, Domain Whois Protection Service/ jiang lei

Case No. D2014-0389

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 Whois Agent, Domain Whois Protection Service/ jiang lei of Beijing, China.

2. The Domain Names and Registrar

The disputed domain names <cayenne-cayenne.com>, <porsche-che.com>, <porscheche.com>, <Porsche‑home.com> and <porsche-s.com> are registered with HiChina Zhicheng Technology Ltd. (the "Registrar").

3. Procedural History

The Complaint regarding the disputed domain names <porsche-home.com> and <porsche-s.com> was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 12, 2014. On March 12, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 14, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 19, 2014 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 regarding the registrant and contact information on March 24, 2014 along with a request that the disputed domain names <cayenne-cayenne.com>, <porsche-che.com> and <porscheche.com> be added to the proceedings. On March 26, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the additional disputed domain names. On March 27, 2014, 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 March 19, 2014, the Center transmitted an email to the parties in both English and Chinese regarding the language of the proceedings. On March 24, 2014, the Complainant submitted its request that English be the language of the proceeding. The Respondent did not submit any comments within the specified due date.

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 April 1, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 21, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 22, 2014.

The Center appointed Susanna H.S. Leong as the sole panelist in this matter on May 2, 2014. 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 been a maker of sports cars for more than 70 years and has used the sign "Porsche" as the prominent and distinctive part in its trade name. It owns numerous registered trademarks consisting of or incorporating the word "Porsche" in many countries throughout the world such as the United States, Germany, the European Community, Canada and China. Furthermore, the Complainant also owns registered trademarks consisting of or incorporating the word "Cayenne" in several countries including China. Porsche cars are distributed worldwide through a network of official dealers.

The Complainant also operates its website at "www.porsche.com" with a specialized section intended for Chinese visitors ("www.porsche.com/china/").

The disputed domain names were created on the following dates:

<cayenne-cayenne.com> January 10, 2014;

<porsche-che.com> January 8, 2014;

<porscheche.com> January 8, 2014;

<porsche-home.com> January 10, 2014;

<porsche-s.com> January 10, 2014.

5. Parties' Contentions

A. Complainant

The Complainant contends the disputed domain names are identical to its well-known and distinctive PORSCHE and CAYENNE trademarks on the following grounds:

1. The disputed domain names are confusingly similar to the Complainant's trade name and trademarks PORSCHE and CAYENNE, embodied fully and identically, just adding as a descriptive element the word "home", indicating the Complainant's home page, or "s", respectively, indicting "sport" or "Stuttgart" (the Complainant's home city in Germany), or "che" indicating the ISO 3166 code for Switzerland, all indicative of the Complainant.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names on the following grounds:

1. Neither is there a use nor are there any preparations to use the disputed domain names with a bona fide offering of goods or services.

2. There is not and has never been a business relationship between the parties.

3. The Respondent is not commonly known by the disputed domain names.

4. The Respondent is not making noncommercial or fair use of the disputed domain names, rather they redirects to a parking site featuring advertising.

The Complainant contends that the disputed domain names were registered and are being used in bad faith on the following grounds:

1. The disputed domain names resolve to a Chinese language website that by its look and feel, in particular by the use of original photos taken from the Complainant's sources, appears to be the official Chinese website provided by the Complainant.

2. This is a case of paragraph 4(b)(iv) of the UDRP because the Respondent benefits by misleading the public in order to attract viewers to a commercial website that is intended to be mistaken as the Complainant's Chinese main website.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

6.1. Language of the Proceeding

According to the information received by the Center from the Registrar, the language of the Registration Agreement for the disputed domain names is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented in the case file, no agreement appears to have been entered into between the Complainant and the Respondent to the effect that the proceeding should be in English. Complying with the information provided by the Center, the Complainant has submitted a request that the proceeding should be in English, to which the Respondent has not objected.

After considering the circumstances of the present case and the submission of the Complainant's request, the Panel is of the opinion that the language of the present proceeding shall be English and the decision will be rendered in English. The Panel based its decision on the following reasons:

(i) The Panel's discretion under the Policy

Paragraph 11 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."

Thus, the parties may agree on the language of the administrative proceeding. In the absence of an agreement, the language of the registration agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel's discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.

(ii) The circumstances of this proceeding

One important consideration is the issue of fairness to both parties in their abilities to prepare the necessary documents for this proceeding and also to respond adequately to these documents when they are served upon the parties.

In particular, the Panel notes that the material facts of this proceeding are generated in the English language. On record, the Respondent appears to be Chinese and is thus presumably not a native English speaker, but the Panel finds that persuasive evidence has been adduced by the Complainant to suggest in the interests of fairness, the language of the proceeding ought to be English. In particular, the Panel notes that (a) the disputed domain name is made up of letters in Ascii-Script and could be pronounced phonetically in English; and (b) the Center has notified the Respondent of the proceeding in both Chinese and English. The Respondent had a choice to respond to the Complaint in either Chinese or English as the Panel who has been appointed by the Center is conversant in both languages. The Panel is of the view that if the Respondent had experienced difficulty with the English language, it could have communicated this to the Center and the Panel may have ruled accordingly. However, the Respondent has chosen not to respond to the Center's communications or to the Complainant's allegations. Considering these circumstances, the choice of English as the language of the present proceeding is efficient and fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case.

In considering the circumstances of the present case, the Panel decides that the language of the proceeding shall be English and the decision will be rendered in English.

6.2. Substantive Elements of the Policy

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain names, the Complainant must establish that each of the three following elements is satisfied:

1. the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

2. the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

3. the disputed domain names have been registered and are being used in bad faith.

Paragraph 4(a) of the Policy clearly states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied in this proceeding.

Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.

On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

The Complainant has adduced evidence to demonstrate that it has registered trademark rights and continues to have such rights in the PORSCHE and CAYENNE trademarks for sports cars in many countries in the world. Furthermore, the Panel finds that the Complainant has registered trademark rights in the PORSCHE and CAYENNE trademarks in China, the country in which the Respondent appears to reside. The Panel finds that the Complainant's PORSCHE and CAYENNE marks are distinctive and widely-known for sports cars offered by the Complainant.

In assessing the degree of similarity between the Complainant's trademark and the disputed domain names, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between the Complainant's trademark and the disputed domain names is to be considered from the perspective of the average consumer of the goods or services concerned in this case, and the average consumer is the Internet user seeking to purchase or download information about the Complainant's products.

The disputed domain names consist of the Complainant's trademarks PORSCHE and CAYENNE in their entirety, non-distinctive terms such as "home", "s", and "che" and the generic Top-Level Domain (gTLD) suffix ".com". The Panel is of the view that the most prominent and distinctive part of the disputed domain names consist of the terms "porsche" and "cayenne" which for all intents and purposes are identical to the Complainant's registered trademarks PORSCHE and CAYENNE. Given the fame and notoriety of the Complainant's PORSCHE and CAYENNE trademarks, the addition of the non-distinctive terms such as "home", "s", and "che" and gTLD suffix ".com" are inadequate distinguishing factors.

Bearing in mind the following factors, in particular (a) the widespread reputation and high degree of recognition of the Complainant's PORSCHE and CAYENNE trademarks as a result of its fame and notoriety and (b) the distinctive character of the Complainant's PORSCHE and CAYENNE trademarks, the Panel therefore finds that the disputed domain names are identical or confusingly similar to the PORSCHE and CAYENNE trademarks in which the Complainant has rights.

The Panel finds for the Complainant on the first part of the Policy.

B. Rights or Legitimate Interests

Based on the following reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names:

(1) there is no evidence of a legitimate use by the Respondent of the disputed domain names or reasons to justify the choice of the terms "porsche" and "cayenne" in its business operations;

(2) there is no evidence to show that the Complainant has licensed or otherwise permitted the Respondent to use its trademark or to apply for or use any domain name incorporating the PORSCHE and CAYENNE trademarks;

(3) there is no indication whatsoever that the Respondent is commonly known by the disputed domain names and/or is using the disputed domain names in connection with a bona fide offering of goods or services;

(4) the Complainant and its PORSCHE and CAYENNE trademarks enjoy a widespread reputation and high degree of recognition as a result of its fame and notoriety in the sports cars market and are registered trademarks in many countries all over the world, including China. Consequently, in the Panel's view, in the absence of contrary evidence from the Respondent, the PORSCHE and CAYENNE trademarks are not those that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant.

The Panel notes the overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the complainant's contentions. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1. Based on the above reasons, the Panel finds that the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption.

According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:

"(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you [Respondent] have acquired no trademark or service mark rights; or

(iii) you [Respondent] are 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 Panel notes that the Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or evidence of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name. The Panel further notes that the Respondent has failed to submit a Response to the Complaint filed against it. In particular, the Respondent has failed to make submissions to demonstrate that it has rights or legitimate interests in the disputed domain name.

In accordance with the Rules, paragraph 14, the Panel thus draws such inferences as it considers appropriate, which are that the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent appears to be unable to adduce evidence of any rights to or legitimate interests in the disputed domain name.

The Panel finds for the Complainant on the second part of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith, namely:

(i) circumstances indicating that the respondent has registered or 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 the complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's 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 respondent's website or location or of a product or service of the respondent's website or location.

The above circumstances are indicative of registration and use of a domain name in bad faith but they are by no means exhaustive. Evidence of other circumstances adduced before the panel can also constitute registration and use of a domain name in bad faith by a respondent in appropriate cases.

One important consideration in the Panel's assessment of whether the Respondent has registered and is using the disputed domain names in bad faith is prior knowledge on the part of the Respondent of the Complainant's rights in the trademarks concerned. In this day and age of the Internet and advancement in information technology, the reputation of brands and trademarks transcend national borders. Taking into account the worldwide reputation of the Complainant and its PORSCHE and CAYENNE trademarks, as well as the market presence of the Complainant in numerous countries including China, the Panel finds that it is highly unlikely that the Respondent would not have had actual notice of the Complainant's trademark rights at the time of the registration of the disputed domain name. Furthermore, the Complainant's brand of sports cars is widely available on the Internet via its official website "www.porsche.com" as well as a specialized section intended for Chinese visitors ("www.porsche.com/china/"). A simple search on the Internet would reveal the presence of the Complainant's trademarks and domain names. Therefore, the Panel finds that it is not conceivable that the Respondent would not have had actual notice of the Complainant's trademark rights at the time of the registration of the disputed domain names. Consequently, it would have been pertinent for the Respondent to provide an explanation of its choice in the disputed domain names, failing which the Panel draws the conclusion that the disputed domain names were registered in bad faith with an intent to create an impression of association with the Complainant and its products.

Where the Respondent has chosen to register disputed domain names that are identical or confusingly similar to the Complainant's trademarks and where the trademarks in question have through substantial use acquired worldwide fame, reputation and notoriety, a reasonable conclusion is that the trademarks are not those that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant. Thus, the burden on the Respondent to show that the choice of the disputed domain names was made legitimately and in good faith for the genuine offering of goods or services on the Internet is a very heavy one. There is no evidence that the Respondent has used or intends to use to the disputed domain names for purposes of bona fide offering of goods and services over the Internet. On the contrary, the disputed domain names resolve upon a Chinese language website that by its look and feel, in particular by the use of original photos taken from the Complainant's sources, appears to be but is not the official Chinese website provided by the Complainant when the Respondent is not affiliated with nor authorized by the Complainant in any way, and he is not related in any way to the Complainant's business. In this regard, the Panel finds that the Respondent has not provided any plausible explanation.

The Panel finds that the Complainant has adduced evidence and proved that by using confusingly similar disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website under paragraph 4(b)(iv) of the Policy. The Panel finds that given the widespread fame of the Complainant's PORSCHE and CAYENNE trademarks and a lack of plausible explanation for the choice of incorporating the Complainant's famous trademarks in the disputed domain names, the reproduction of a website by its look and feel appears to be the official Chinese website provided by the Complainant are certainly relevant factors indicating bad faith registration and use.

Thus, the Panel finds for the Complainant on the third part of the Policy.

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 disputed domain names <cayenne-cayenne.com>, <porsche-che.com>, <porscheche.com>, <porsche-home.com> and <porsche-s.com> be transferred to the Complainant.

Susanna H.S. Leong
Sole Panelist
Date: May 16, 2014