WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dr. Ing. h.c. F. Porsche AG v. Vladimir Osminkin / Domain Admin, PrivacyProtect.org
Case No. D2015-0142
1. The Parties
The Complainant is Dr. Ing. h.c. F. Porsche of Stuttgart, Germany, represented by Lichtenstein, Körner & Partners, Germany.
The Respondent is Vladimir Osminkin of Moscow, Russian Federation / Domain Admin, PrivacyProtect.org of Queensland, Australia.
2. The Domain Name and Registrar
The disputed domain name <design-porsche.com> is registered with Registrar of Domain Names REG.RU LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 28, 2015. On January 28, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 30, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint, and informed the Center that the language of the Registration Agreement for the disputed domain name was Russian. The Center sent an email communication to the Complainant on January 30, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same date, the Center sent the the language of the proceeding document and invited the Complainant to state its position on this issue by February 2, 2015, and the Respondent – by February 4, 2015. The Complainant filed an amendment to the Complaint on February 1, 2015, with which it reiterated its request that the proceeding be held in the English language. The Respondent did not state its position within the deadline fixed by the Center.
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 in Russian and English, and the proceedings commenced on February 6, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was initially February 26, 2015.
On February 17, 2015, the Complainant requested a 30 day suspension of the proceedings, so that the Parties make an attempt to settle the dispute. On the same day, the Center suspended the proceeding until March 19, 2015. On March 20, 2015, the Complainant requested the reinstitution of the proceeding. On March 23, 2015, the Center reinstituted the proceeding and fixed the due date for submission of a Response to April 1, 2015. Several brief email communications in Russian were received by the Respondent however no formal Response was filed with the Center. On April 13, 2015, the Center informed the Parties about the commencement of the Panel Appointment process.
The Center appointed Assen Alexiev as the sole panelist in this matter on May 6, 2015. 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.
In respect of the language of the proceeding, the Panel notes the following. According to the information provided by the Registrar, the language of the Registration Agreement for the disputed domain name is Russian. Under paragraph 11 of the Rules, unless otherwise agreed by the Parties, or otherwise specified 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 Complainant has submitted its Complaint in the English language, and has requested that the proceedings be held in English, arguing that the Complainant would be prejudiced and the proceeding would be delayed due to the extra expense and time in having the Complaint and all annexes translated into Russian, and that the Respondent had employed an international business corporation, based in Australia, to serve as its domain name proxy. The Respondent has not objected to the proceeding being held in English. The Center has sent all its messages to the Respondent in both English and Russian and has informed the Parties that it will accept a Response in either English or Russian.
In these circumstances, it appears to the Panel that using the English language in this proceeding will be fair and efficient and will not put either of the parties at a disadvantage. Therefore, in exercise of its powers under paragraph 11 of the Rules, the Panel decides that the language of this administrative proceeding be English. At the same time, the Panel will review and take into account the relevant evidence that is available in this case in either Russian or the English language.
4. Factual Background
The Complainant has been a maker of sports cars for more than 70 years, and uses “Porsche” as the prominent and distinctive part of its trade name.
The Complainant is the owner of the following trademark registrations for PORSCHE (the “PORSCHE trademark”):
- the International Trademark PORSCHE with registration No. 179928, registered on October 8, 1954, for goods and services in International Classes 7, 8 and 12;
- the International Trademark PORSCHE, with registration No. 473561, registered on September 29, 1982, and protected in the Russian Federation, registered for goods and services in International Classes 3, 8, 9, 14, 16, 18, 21, 24, 25, 28, 33 and 34;
- the United States Trademark PORSCHE with registration No. 0618933, registered on January 10, 1956 for goods in International Class 12; and
- the Community Trademark PORSCHE, with registration No. 000073098, registered on December 12, 2000 for goods and services in International Classes 3, 8, 9, 12, 14, 16, 18, 21, 24, 25, 28, 34, 35, 36, 37, 39 and 42.
The Complainant is also the owner of the International Trademark PORSCHE DESIGN with registration No. 456717, registered on July 29, 1980, protected both in Australia and in the Russian Federation for goods and services in International Classes 8, 9, 11, 12, 14, 16, 18, 20, 22, 25, 28 and 34 (the “PORSCHE DESIGN trademark”).
The Complainant has exclusively licensed its PORSCHE DESIGN trademark to the Austrian company Porsche Design Management GmbH & Co KG, Salzburg. This company, owned and operated by members of the Porsche family, is one of the world’s leading and most prestigious designers and producers of high quality consumer products, namely watches, luggage, briefcases, glasses, writing tools, knives, leatherwear, wallets, key-holders, organizers, golf accessories and shoes, including sneakers. The website of Porsche Design is located at “www.porsche-design.com”. Since 2005, the Porsche Design Group has maintained a strategic partnership with Adidas Corporation. In collaboration with Adidas, Porsche Design co-branded sneakers are produced and sold worldwide through authorized shops.
The Complainant operates its official website at “www.porsche.com”.
The disputed domain name was registered on June 30, 2013.
5. Parties’ Contentions
The Complainant submits that its trade name and the “Porsche” trademark are known throughout the world and enjoy a reputation for high quality and excellent performance.
The Complainant points out that the disputed domain name is confusingly similar to the Complainant’s trade name and to the PORSCHE trademark which it fully incorporates, just adding the descriptive element “design”. The Complainant also submits that the disputed domain name is confusingly similar to the Complainant’s PORSCHE DESIGN trademark, whose two elements are incorporated in the disputed domain name. This reinforces the impression that the website at the disputed domain name is operated by or authorized by the Complainant.
According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not used or prepared to use the disputed domain name in connection with a bona fide offering of goods or services. There has never been a business relationship between the parties. The Respondent is not commonly known by the disputed domain name, and is not making a noncommercial use of it.
The Complainant contends that the disputed domain name was registered and is being used in bad faith. The disputed domain name resolves to an online shop displaying the Complainant’s trademarks. The PORSCHE DESIGN trademark features prominently as the name of the shop along with the words “Интернет Магазин” (“Internet Shop” in Russian). The PORSCHE DESIGN logo is used as a browser-tab symbol (also referred to as favicon). The shop offers counterfeit PORSCHE DESIGN sneakers as genuine merchandise, seemingly proven by a fake document of authenticity, purportedly issued by Adidas. The owner of the website is not indicated anywhere in the website at the disputed domain name, and this website contains no indication that the Complainant and its licensee are not connected to this website.
The Respondent did not submit a formal Response in this proceeding. The only statement that the Respondent made several times in the course of this proceeding was that it was ready to transfer the disputed domain name to the Complainant.
6. Discussion and Findings
Pursuant to Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the Respondent has registered and is using the disputed domain name in bad faith.
In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.
Pursuant to the Rules, at paragraph 5(b)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…”. In the event of a default, under the Rules, at paragraph 14(b): “…the Panel shall draw such inferences therefrom as it considers appropriate.”
As stated by the panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004: “Here, the potential evidence of good faith registration and use was in respondent’s control. Respondent’s failure to present any such evidence or to deny the complainant’s allegations allows an inference that the evidence would not have been favorable to respondent.” As stated by the panel in Viacom International Inc. v. Ir Suryani, WIPO Case No. D2001-1443: “Since the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, this Panel is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by the Complainant […]. In the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended for factual and legal conclusions as proven by such evidence.”
In this administrative proceeding, the Respondent’s lack of a formal Response entitles the Panel to conclude that the Respondent has no arguments or evidence to rebut the assertions of the Complainant. The Panel has to take its decision on the basis of the statements and documents submitted by the Complainant and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.
A. Identical or Confusingly Similar
In the present case, the Complainant has provided evidence relating to the registrations of the PORSCHE trademark and the PORSCHE DESIGN trademark in which the Complainant relies in this proceeding.
It is well established that in appropriate circumstances the generic Top-Level Domain (“gTLD”) such as “.com” may not be taken into account for the purposes of the test of identity or confusing similarity. Therefore, the relevant part of the disputed domain name consists of the elements “porsche” and “design”, separated by a hyphen. The “porsche” element is identical to the PORSCHE trademark, and the element “design” is descriptive of some of the services provided by the Complainant directly or through its affiliates. At the same time, the combination of the elements “porsche” and “design”, is confusingly similar to the PORSCHE DESIGN trademark, as the disputed domain name contains the same element, put in reverse order.
Given all this, the Panel finds that the disputed domain name is confusingly similar to the PORSCHE and PORSCHE DESIGN trademarks in which the Complainant has rights, and that the Complainant has established the first element of paragraph 4(a) of the Policy in relation to the disputed domain name.
B. Rights or Legitimate Interests
The Policy requires the Complainant to make at least a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name. Once the Complainant makes such a showing, the Respondent may provide evidence to demonstrate that it has rights or legitimate interests in the disputed domain name. The burden of proof, however, always remains on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
The Complainant has contended that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the Respondent has not used or prepared to use the disputed domain name in connection with a bona fide offering of goods or services, that there has never been a business relationship between the Complainant and the Respondent, and that the Respondent is not commonly known by the disputed domain name and is not making a noncommercial use of it. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Respondent, although given a fair opportunity to do so, chose not to present to the Panel a formal Response in accordance with the Rules, paragraphs 5(b)(i) and 5(b)(ix), despite the consequences that the Panel may extract from the fact of a default (Rules, paragraph 14). If the Respondent had any legitimate reasons for the registration and use of the disputed domain name, it could have brought them to the attention of the Panel. In particular, the Respondent has failed to deny the contentions of the Complainant and to contend that any of the circumstances described in Policy, paragraph 4(c), is present in its favor.
Apart from the factual contentions of the Complainant, the only other sources of information about the Respondent are the WhoIs information provided by the Registrar, and the content of the website to which the disputed domain name resolves. The WhoIs information contains no evidence that the Respondent is commonly known by the disputed domain name. The disputed domain name is confusingly similar to the PORSCHE and to the PORSCHE DESIGN trademarks, which were registered and widely used for decades before the registration of the disputed domain name. There is no evidence that the Complainant has licensed or authorised the Respondent’s use of the PORSCHE and the PORSCHE DESIGN trademarks in the disputed domain name. As contended by the Complainant, the website to which the disputed domain name resolves offers what appears to be counterfeit products bearing the Complainant’s trademarks and contains no disclaimer for the lack of affiliation between the Respondent and the Complainant.
In the Panel’s view, these circumstances show that the Respondent was well aware of the Complainant and of its PORSCHE and PORSCHE DESIGN trademarks when it registered the disputed domain name, and its registration and use was made without the consent of the Complainant in an attempt to take advantage of the goodwill of the Complainant and of its trademarks by attracting Internet traffic to the Respondent’s website and offering counterfeit goods. The Panel is of the opinion that such conduct cannot give rise to rights or legitimate interests in the disputed domain name, and finds that the Complainant’s prima facie case has not been rebutted.
Consequently, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy in respect of the disputed domain name and the Respondent has failed to show that it has rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists four illustrative circumstances that shall each be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
(i) circumstances indicating that a respondent has registered or has acquired a 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 that complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) that a respondent 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) that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent intentionally attempted to attract, for commercial gain, Internet users to its web site 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 its website or location or of a product or service on its website or location.
As discussed above in relation to the issue of rights or legitimate interests, the Respondent must have been well aware of the Complainant and of its products prior to the registration of the disputed domain name, which is confusingly similar to the PORSCHE and PORSCHE DESIGN trademarks. The disputed domain name was registered decades after the PORSCHE and PORSCHE DESIGN trademarks were first registered in the Russian Federation. The Respondent has not established that it has any rights or legitimate interests in the disputed domain name. The Complainant has a global presence and an impressive reputation as maker of sports cars. In the Panel’s view, these circumstances support a finding that the Respondent has chosen and registered the disputed domain name in bad faith in view of its attractiveness to consumers stemming from the goodwill in the PORSCHE and PORSCHE DESIGN trademarks.
The Respondent has not denied that the commercial website linked to the disputed domain name offers counterfeit products bearing the Complainant’s trademarks. Taken together, and in the absence of any evidence or allegation to the contrary, the circumstances of this case satisfy the Panel that the Respondent, by registering and using the disputed domain name, has intentionally attempted to attract for commercial gain Internet users to the website at the disputed domain name by creating a likelihood of confusion with the PORSCHE and PORSCHE DESIGN trademarks as to the source, sponsorship, affiliation, or endorsement of the same website and of the products offered there. This supports a finding of bad faith registration and use of the disputed domain name under Policy, paragraph 4(b)(iv).
Therefore, the Panel finds that the Respondent has registered and used 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 <design-porsche.com> be transferred to the Complainant.
Date: June 5, 2015