WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dr. Ing. h.c. F. Porsche Aktiengesellschaft v. John Smith
Case No. D2014-1859
1. The Parties
Complainant is Dr. Ing. h. c . F. Porsche Aktiengesellschaft of Stuttgart, Germany, represented by Lichtenstein, Körner & Partners, Germany.
Respondent is John Smith of London, United Kingdom of Great Britain and Northern Ireland (the “UK”), self-represented.
2. The Domain Name and Registrar
The disputed domain name <porsches.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 23, 2014. On October 23, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 24, 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 October 30, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 19, 2014. Apart from two emails received on November 20 and 24, 2014, discussed at 5.B. below, no formal Response was filed with the Center.
The Center appointed Jordan S. Weinstein as the sole panelist in this matter on November 26, 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.
On December 15, 2014, the Panel issued Administrative Panel Procedural Order No. 1, providing the parties with an opportunity to comment on independent research by the Panel, discussed in detail at Section 6.D.1 below. Complainant provided comments on December 16, 2014. Respondent has not provided comments.
4. Factual Background
Complainant is the owner of several registrations for the trademark PORSCHE. The date of the earliest registration attached to the Complaint is 1954. These registrations cover many countries around the world, including the UK.
The disputed domain name was registered on March 13, 2000, well after Complainant’s trademark was registered.
5. Parties’ Contentions
Complainant asserts that it has been a maker of sports cars for more than 70 years under the “Porsche” name. It owns numerous registered trademarks consisting of or incorporating the term “Porsche”. Complainant annexed to the Complaint International, European, UK and United States of America registrations for the PORSCHE trademark, the earliest of which were registered in 1954.
Complainant asserts that Respondent’s name, ”John Smith”, is a generic placeholder for an unknown or exemplary identity as an alternative to “John Doe”. Complainant asserts that this individual has been active in cybersquatting since at least the year 2000. Complainant has provided evidence of domain name registrants sharing the same address, Registrant ID, and telephone number as the registrant. From this evidence, Complainant concludes that the Respondent has registered “typo squatting” versions of well-known trademarks such as eBay, PLAYBOY and RAND-McNALLY. That these domain names target the owners of these marks was evidenced by the websites to which each domain name resolved, and which referenced the types of goods or services sold by the respective mark owners.
Furthermore, Complainant asserts that registrants sharing the address, telephone and domain identity information of respondent have been determined by previous UDRP panels to have registered domain names abusively. See, e.g., Pharmaceutical Product Development, Inc., Pharmaco Investments, Inc. v. Damian Macafee (a.k.a James M. Van Johns), QTK Internet/Name Proxy/Private Registration, WIPO Case No. D2011-0637; Sony Kabushiki Kaisha v. Damian Macafee/QTK Internet, WIPO Case No. D2009-1134, and cases cited therein; Microsoft Corporation v. Damian Macafee, WIPO Case No. D2004-0027.
The disputed domain name resolves to a parking page with pay-per-click type links, each link including the name “Porsche” and a generic word related to automobiles. Complainant asserts that these links, when clicked, divert Internet users via intermediary websites to commercial websites completely unaffiliated with Complainant, but selling products related to Complainant’s automobiles.
Complainant asserts that since the disputed domain name was registered by Respondent in 2000, the name has been used for advertising from “sponsors” through 2007, as a parking page with click-through links in 2008, to an ”error” page from 2011 through 2014, and once again, in 2014, as a parking page with click-through links.
Complainant asserts that the disputed domain name is confusingly similar to Complainant’s trade name and registered trademark, adding only the plural letter “s”.
Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain name, because there is neither a use nor any preparations to use the disputed domain name with a bona fide offering of goods or services, because there is not and has never been a business relationship between the parties, because Respondent is not commonly known by the disputed domain name, and because Respondent is not making a fair or noncommercial use of the domain name. Further, Respondent’s use of the disputed domain name for advertising or parking websites does not confer a legitimate interest in the domain name.
Complainant asserts that Respondent has registered and is using the disputed domain name in bad faith, because Respondent is intentionally attempting to attract, for commercial game, Internet users to its website by creating a likelihood of confusion with Complainant’s trademark as to the source of the website or the click-through links or advertising located thereon. Complainant asserts that there are no conceivable circumstances in which a legitimate use of the domain name could be imagined, in particular not for a page with click-through links for products related to Complainant’s PORSCHE automobiles. Complainant asserts that Respondent was aware of Complainant’s famous trademark, and that bad faith is corroborated by Respondent’s use of a pseudonym in its registration.
Finally, Complainant asserts there is no basis for a laches or acquiescence defense because Complainant did not know about the domain name, and never gave any reason to Respondent that the disputed domain name and its use was acceptable at any time.
On November 20 and November 24, 2014, Respondent sent informal communications to the Center, inquiring about the procedures for filing a response. The Center provided information to Respondent in an email of November 20, 2014, and provided a link to information about procedures for filing a response in an email on November 24, 2014. However, the Center received no further response from Respondent, and Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements in order to prevail in this proceeding:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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.
It is not sufficient to prevail that a complainant prove only registration in bad faith; rather, the complainant must prove both registration and use in bad faith. See World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001; Robert Ellenbogen v. Mike Pearson, WIPO Case No. D2000-0001.
The Policy, paragraph 4(b), states that the following circumstances shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the disputed domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the respondent has registered the disputed 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.
These circumstances are non-exclusive, and a UDRP panel may consider other circumstances as constituting registration and use of a domain name in bad faith.
Respondent may demonstrate rights in or legitimate interests to the disputed domain name by any of the following, without limitation (Policy, paragraph 4(c)):
(i) Before any notice to you of the dispute, your use of, or demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) you, as an individual, business, or other organization have been commonly known by the disputed domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Where, as here, Respondent is in default, the Panel may draw such inferences as it considers appropriate. Policy, paragraph 14(b).
B. Identical or Confusingly Similar
The Panel finds that the disputed domain name <porsches.com> is confusingly similar to Complainant’s registered trademark PORSCHE. Pluralizing Complainant’s trademark does not avoid the confusing similarity between the disputed domain name and the mark. SeeHalcyon Yarn, Inc. v. Henry Chan, WIPO Case No. D2004-0336.
The Panel finds that Complainant has provided sufficient evidence to establish paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
There is no evidence that Complainant has authorized Respondent to use Complainant’s trademark, or that Respondent has any relationship with Complainant or otherwise has permission to register any domain name incorporating Complainant’s trademark. There is no evidence that Respondent’s use of the disputed domain name has ever been in connection with a bona fide offering of goods or services or that Respondent has made a legitimate noncommercial or fair use of the disputed domain name. Respondent does not appear to be commonly known by the disputed domain name.
As a result, Complainant has established paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
1. John Smith and Damian Macafee
Complainant asserts that Registrant’s name, John Smith, is a cover or pseudonym for Damien Macafee, and that registrant has adopted the former over the latter to escape the latter’s unfavorable history of documented cybersquatting. As evidence of this, Complainant notes that Respondent’s PO Box address is identical to the address of Damien Macafee as reported in the following UDRP decisions:
a. Tom Leykis v. Damian Macafee d/b/a QTK Internet/Name Proxy, NAF Claim No. 00636552
b. Radisson Hotels International, Inc. v. Damian Macafee d/b/a QTK Internet (Name Proxy); NAF Claim No. 00652870
The Panel notes that the city, country and postcode in the registration for the disputed domain name are also identical to Mr. Macafee’s corresponding information as reported in the aforementioned UDRP decisions.
To be assured that this common information was more than mere coincidence, the Panel undertook its own research. It is the consensus view that UDRP panels may undertake limited factual research into matters of public record. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.5. However, panels often consider issuing a procedural order to the parties to give them an opportunity to comment on the factual research being considered.
To this end, on December 15, 2014, the Panel issued Administrative Panel Procedural Order No. 1, describing the research the Panel conducted and the facts uncovered, and affording the parties five business days to comment.
In WhoIs history searches for the domain names <pleyboy.com> (Annex 11 to the Complaint) and <ecay.com> (Annex 12 to the Complaint), the registrant’s name had changed from “Damian Macafee” in the previous versions to “John Smith” in the present versions, although the post box, street address, city, country, postal code, telephone number and registrant ID information remained the same. The Panel concludes that this is more than mere coincidence, and that Damian Macafee and John Smith are the same person or entity, or under common control.
2. Damian Macafee and cybersquatting
Mr. Macafee has been found by numerous UDRP panels to have registered domain names in violation of the Policy. See Tom Leykis v. Damian Macafee d/b/a QTK Internet/Name Proxy, NAF Claim No. 00636552; Radisson Hotels International, Inc. v. Damian Macafee d/b/a QTK Internet (Name Proxy); NAF Claim No. 00652870; and the cases cited by Complainant, supra.
In light of the foregoing, this Panel attributes Mr. Macafee's activities to Respondent John Smith.
3. Respondent John Smith
The Panel finds that Complainant has provided sufficient evidence satisfying paragraph 4(b)(iv) of the Policy, namely that by using the disputed domain name, Respondent intentionally intended to attract for commercial gain Internet users to its website by creating a likelihood of confusion with Complainant’s PORSCHE trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s website.
From Respondent’s registration of the plural form of Complainant’s well-known trademark, the fact that the website linked to the disputed domain name contains pay-per-click-type links directed to PORSCHE automotive products, Respondent’s failure to file a response despite its awareness of the proceeding, and Respondent’s past involvement in UDRP proceedings, this Panel draws an inference that Respondent must have been aware of Complainant’s well-known trademark and intended to divert Internet users seeking information about Complainant or its dealers, in order to receive pay-per-click revenue.
The Panel finds that Complainant has also provided evidence sufficient to satisfy paragraph 4(b)(ii) of the Policy, namely that respondent has registered the disputed domain name in order to prevent Complainant from reflecting the mark in a corresponding domain name. Combined with the inferences this Panel may make as a result of Respondent’s default, the Panel concludes that Respondent has engaged in a pattern of such registrations under his pseudonym, linked to websites with pay-per-click advertising, and this is further evidence of Respondent’s bad faith use and registration of the disputed domain name.
The Panel recognizes that there has been a 14 year gap between the date the disputed domain name was registered and the date that Complainant filed this proceeding. Complainant asserts that it was not aware of the disputed domain name and that Respondent could not have relied on Complainant’s acquiescence because Complainant never informed Respondent that the latter’s registration of the domain name was acceptable.
Paragraph 4.10 of the WIPO Overview, 2.0, addresses this situation:
Panels have recognized that the doctrine or defense of laches as such does not generally apply under the UDRP, and that delay (by reference to the time of the relevant registration of the disputed domain name) in bringing a complaint does not of itself prevent a complainant from filing under the UDRP, or from being able to succeed under the UDRP, where a complainant can establish a case on the merits under the requisite three elements. Panels have noted that the remedies under the UDRP are injunctive rather than compensatory in nature, and that a principal concern is to avoid ongoing or future confusion as to the source of communications, goods, or services.
Whether or not respondents are categorically precluded from asserting the defenses of laches or acquiescence in UDRP proceedings, these are defenses that must be asserted affirmatively (see, e.g., Fed. R. Civ. P. 12(b)), and Respondent failed affirmatively to assert them. The Panel agrees with the Policy’s principal concern of avoiding ongoing or future confusion as to the source of goods or services, and that the Policy’s aims are disserved by denying injunctive relief where confusion is likely. The Panel notes that at law, laches does not bar injunctive relief where confusion is inevitable. See, e.g., Sara Lee Corp. v. Kayser-Roth Corp., 81 F.3d 455, 463 (4th Cir. 1996); cert denied, 519 U.S. 976 (1996).
For these reasons, the Panel concludes that Complainant’s delay under the circumstances does not preclude it from relief under the Policy.
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 <porsches.com> be transferred to Complainant.
Jordan S. Weinstein
Date: December 20, 2014