WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dr. Ing. h.c. F. Porsche AG v. Manuel Dasilva
Case No. D2014-0672
1. The Parties
Complainant is Dr. Ing. h.c. F. Porsche AG of Stuttgart, Germany, represented by Lichtenstein, Körner & Partners, Germany.
Respondent is Manuel Dasilva of Nice, France.
2. The Domain Names and Registrar
The disputed domain names <porsche-allemagne.com> and <porsche-italie.com> (the "Domain Names") are registered with Network Solutions, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 23, 2014. On April 24, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On April 25, 2014, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on May 8, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 28, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on May 30, 2014.
The Center appointed Dinant T. L. Oosterbaan as the sole panelist in this matter on June 12, 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
Complainant has been a maker of sports cars for more than 70 years.
According to the evidence submitted by Complainant, Complainant has a large number of German and international trademark registrations for PORSCHE.
Complainant is the owner of the following trademarks:
- German trademark PORSCHE No. 643 195, registered August 26, 1953;
- International trademark registration PORSCHE No. 179 928, registered October 8, 1954 (protected in Italy and France);
- International trademark registration PORSCHE No. 473 561, registered September 29, 1982 (protected in Italy and France);
- European trademark registration PORSCHE No. 000073098, registered December 12, 2000.
Porsche cars are distributed worldwide through a network of official dealers. Complainant operates its web site at "www.porsche.com".
The Domain Name <porsche-italie.com> was registered on January 17, 2014, and the Domain Name <porsche-allemagne.com> was registered on January 24, 2014.
The trademark registrations of Complainant have been issued prior to the registration of the Domain Names.
5. Parties' Contentions
Complainant submits that the Domain Names are confusingly similar to its PORSCHE trademark as they contain the PORSCHE trademark in its entirety. The addition of the generic and descriptive words "italie" (French for Italy) and "allemagne" (French for Germany) to the PORSCHE trademark is not sufficient to distinguish the Domain Names from the PORSCHE trademark.
According to Complainant, Respondent has no rights or legitimate interests in respect of the Domain Names as Respondent is not affiliated or related to PORSCHE in any way. Respondent is also not commonly known by the Domain Names.
The Domain Name <porsche-italie.com> is in the French language. The business concept of buying new and used cars is promoted. According to Complainant there is no information on the legal entity operating the website so the visitor of the website is made believe that Complainant is operating the website. This impression is reinforced by the prominent display of photos that have been copied from Complainant's website without authorization. Complainant adds that the email addresses given in the WhoIs records of the
Domain Names belong to an enterprise that is doing business as a broker and seller of new and used cars under various names, using several domain names and websites, including the website "ww.sos-auto.fr". The operator of this website promises, for a fee, to buy cars of all brands in Germany or Italy on behalf of the customer.
The Domain Name <porsche-allemagne.com> is a website under construction. According to Complainant the intention to use this Domain Name is without doubt the same as the website under the Domain Name <porsche-italie.com>.
Finally, Respondent did not demonstrate use of the Domain Names in connection with a bona fide offering of goods or services. There is not and never has been a business relationship between parties.
According to Complainant Respondent has registered and is using the Domain Names to create the misleading impression of being associated with Complainant.
Complainant submits that Respondent has registered and is using the Domain Names in bad faith. The combination of the trademark PORSCHE with the name of a country will be perceived as indicating incorrectly that the information originates from Complainant. In addition the website at "www.porsche-italie.com" does not accurately describe the relationship between Respondent and Complainant as the owner of the PORSCHE trademark.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to "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 4(a) of the Policy requires that Complainant prove each of the following three elements to obtain an order that the Domain Names should be transferred or cancelled:
(i) the Domain Names registered by Respondent are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent have no rights or legitimate interests in respect of the Domain Names; and
(iii) the Domain Names have been registered and are being used in bad faith.
The Panel will proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied in this proceeding.
Before doing so, the Panel wishes to make the following observation based on the information contained in the record. In its complaint Complainant indicated that there could be a relationship between an individual with the same first and family names as Respondent, such individual located in a city in Northern Germany and operating a used car dealership, and Respondent with an address in Nice, France. After the Center sent a copy of the Complaint to this individual in Germany, this individual contacted the legal representative of Complainant. Pursuant to this contact the representative of Complainant withdrew the indication of a possible relationship between this individual and Respondent. The Panel adds that it has not been able to verify whether or not the name of Respondent belongs to an existing individual located and/or living in Nice, France or whether the name of Respondent is a fictitious name of a non-existing individual. In any event, the concerned Registrar has confirmed that Respondent is the registrant of record for the Domain Names and the Panel therefore directs its decision against Respondent in accordance with what is established in the Policy and the Rules.
A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, Complainant must first of all establish rights in a trademark or service mark and secondly that the Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights.
Complainant has established that it is the owner of numerous trademark registrations for the trademark PORSCHE. The Panel notes that Complainant's registrations predate the creation date of the Domain Names.
The Domain Names <porsche-italie.com> and <porsche-allemagne.com> incorporate the entirety of the well-known PORSCHE trademark as its distinctive element. Many UDRP decisions have found that a domain name is confusingly similar to a complainant's trademark where the domain name incorporates the trademark in its entirety. The addition of the common, descriptive and non-distinctive geographic elements "italie" (French for Italy) and "allemagne" (French for Germany) is insufficient to avoid a finding of confusing similarity.
The Panel finds that Complainant has proven that the Domain Names are confusingly similar to Complainant's trademarks.
B. Rights or Legitimate Interests
In the opinion of the Panel, Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the Domain Names. Complainant has not licensed or otherwise permitted Respondent to use any of its trademarks or to register the Domain Names incorporating its marks. Respondent is not making a legitimate noncommercial or fair use of the Domain Names without intent for commercial gain to misleadingly divert consumers or to tarnish the trademarks of Complainant. Based on the evidence provided by Complainant, Respondent only uses one of the Domain Names in order to direct Internet users to a website under construction which cannot be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Names in this case. Based on the extensive evidence provided by Complainant Respondent only uses the other Domain Name in order to direct Internet users to a website which prominently displays photos that have been copied from Complainant's website without authorization which cannot be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Names in this case. In addition, the website does not accurately and prominently disclose the relationship between Respondent and Complainant as holder of the famous PORSCHE trademarks, in particular as there has never been any business relationship between Complainant and Respondent. Respondent is not commonly known by the Domain Names nor has it acquired trademark rights.
No Response to the Complaint was filed and Respondent has not rebutted Complainant's prima facie case.
Under these circumstances, the Panel finds that Respondent has no rights or legitimate interests in the Domain Names.
C. Registered and Used in Bad Faith
The Panel finds that the Domain Names have been registered and are being used in bad faith. The trademarks of Complainant have been in existence for a long time. Respondent knew or should have known that the Domain Names included Complainant's well known PORSCHE trademark.
The Panel accepts Complainant's submission that bad faith registration and use of the Domain Names is indicated by the fact that Respondent prominently displays photos that have been copied from Complainant's website without authorization. The Panel further notes that one of the websites at the Domain Names is currently a page under construction. Passive holding of a website does not prevent the Panel from finding registration and use in bad faith. The Panel notes that the undeveloped use of such website at the Domain Names which incorporate Complainant's well known trademark in its entirety may be regarded as an additional indication in this case that Respondent registered the Domain Names with the intention to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the trademarks of Complainant as to the source, sponsorship, affiliation, or endorsement of its website or location or of a service on its website or location, as per paragraph 4(b)(iv) of the Policy.
The Panel finds that Complainant has proven that the Domain Names have been registered and are being used 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 Domain Names <porsche-allemagne.com> and <porsche-italie.com> be transferred to the Complainant.
Dinant T. L. Oosterbaan
Date: June 19, 2014