WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dr. lng. h.c. F. Porsche AG v. Porsche GMBH
Case No. D2015-0878
1. The Parties
The Complainant is Dr. lng. h.c. F. Porsche AG of Stuttgart, Germany, represented by Lichtenstein, Körner & Partners, Germany.
The Respondent is Porsche GMBH of Stuttgart, Germany.
2. The Domain Name and Registrar
The disputed domain name <porsche-sk.com> is registered with Tucows Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 22, 2015. On May 22, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 22, 2015, 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 Amended Complaint was filed with the Center on May 28, 2015.
The Center verified that the Complaint together with the Amended 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 May 29, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 18, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 19, 2015.
The Center appointed Christian Schalk as the sole panelist in this matter on June 26, 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.
The Panel has reviewed the record and confirms the Complaint's compliance with the formal requirements. The Complaint was properly notified to the Respondent in accordance with paragraph 2(a) and (b) of the Rules. The language of the proceedings is English.
4. Factual Background
The Complainant is a well-known manufacturer of prestigious cars. Its Porsche automobiles enjoy a very high reputation in many countries of the world for their outstanding technical details and performance as well as for their design and street appreciation. These cars are distributed in many countries through a network of official distributors and importers. For instance, the official dealer for Slovakia is Porsche Inter Auto Slovakia, spol. s.r.o. in Bratislava. The Complainant operates its official website at "www.porsche.com".
The trademark PORSCHE is one of the most well-known trademarks for cars in the world. It has also a reputation for prestigious design products such as watches.
The Complainant owns trademark rights for PORSCHE in many countries of the world. Its earliest trademark rights are the German trademark No. 643195 PORSCHE, registration date August 26, 1953 and IR Mark No. 179928 PORSCHE, registration date October 8, 1954 which protection has been extended to countries in- and outside Europe.
The Respondent registered the disputed domain name on March 3, 2015.
In accordance with printouts from the Internet of April 16, 2015 having been presented by the Complainant before the Panel, the disputed domain name resolved to a technical error page. However, when typing the disputed domain name into the Google search engine, a list of links to a number subdomains, which relate to the disputed domain name results. At least one of these links resolved to a website, which, according to the Complainant, was an almost identical copy of the website of "Porsche Solihull", the Complainant's official United Kingdom of Great Britain and Northern Ireland ("UK") importer. In the "About Us" section, a certain "Porsche Centrum SK" appears with an individual by the name of "Philip Doughty", an email contact "email@example.com" and with the contact details of the official Slovakian importer. The Complainant presented screenshots evidencing the above.
According to the WhoIs record of Nominet, the registry for domain names in the country code Top-Level Domain address area ".co.uk", the Respondent has apparently registered also the domain name <porschecenters.co.uk>. It has been registered the same day as the disputed domain name. This domain name resolves to the above mentioned website as well.
5. Parties' Contentions
The Complainant alleges that the disputed domain name is confusingly similar to its trademarks and trade name "Porsche". The letters "SK" are descriptive elements that indicate only an official dealership for Slovakia.
The Complainant alleges also that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant argues in this context that there has never been a relationship between the Parties, that the Respondent is not commonly known by the disputed domain name, that there is neither use nor any preparations to use the disputed domain name in connection to a bona fide offering of goods or services and that the Respondent is not making any noncommercial or fair use of the disputed domain name.
The Complainant alleges furthermore, that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant believes that the Respondent has registered the disputed domain name as an impersonator of the Complainant. The Complainant argues also that the disputed domain name is used to redirect to a commercial website which appears to be operated or at least endorsed and authorized by the Complainant. The Complainant explains in this context that the content has almost without any changes been copied from the website of its UK distributor including text and images. Only the contact details have been changed so that potential customers interested in the services of the Complainant or its official distributor unknowingly and unwillingly get in contact with the Respondent who then benefits from the contact with these potential customers.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
The Panel shall decide a 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 it deems applicable (paragraph 15(a) of the Rules). Pursuant to paragraph 4(a) of the Policy, the disputed domain name can be transferred only where the Complainant has proven each of the following three elements:
(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 disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has established trademark rights in PORSCHE. The disputed domain name is not identical to the Complainant's trademark. However, the Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark.
As it has been decided by previous panels, incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (see for instance, Casa Editorial El Tiempo, S.A. v. Montanya Ltd, WIPO Case No. D2009-0103; Todito.com v. Francisco Gómez Ceballos, WIPO Case No. D2002-0717; Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615; Compagnie Générale des Etablissement MICHELIN v. Lost in Space, SA, WIPO Case No. D2002-0504; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047).
Furthermore, in accordance with many decisions rendered under the Policy, the addition of descriptive terms or numbers to a trademark is generally not a distinguishing feature (see Bellsouth Intellectual Property Corporation v. Freeworld and/or Luis, WIPO Case No. D2000-1807; Bellsouth Intellectual Property Corporation v. Henry Chan, WIPO Case No. D2004-0550; Canon U.S.A. Inc., Astro Business Solutions, Inc. and Canon Information Systems, Inc. v. Richard Sims, WIPO Case No. D2000-0819; Aventis, Aventis Pharma SA. v. John Smith, WIPO Case No. D2004-0565; Aventis, Aventis Pharma SA. v. John Smith, WIPO Case No. D2004-0624; and Toyota France and Toyota Motor Corporation v. Computer-Brain, WIPO Case No. D2002-0002).
In this case, the letter combination "SK" is the international abbreviation for Slovakia. It simply suggests that the disputed domain name resolves to a website which offers the Complainant's products in Slovakia. Therefore, this letter combination cannot avoid similarity nor does it add anything to avoid confusion with the Complainant's trademark. The only distinctive element of the disputed domain name consists of the term "porsche", which is identical to the Complainant's trademark.
In addition, the ".com" suffix in the disputed domain name does not affect the determination that the disputed domain name is confusingly similar with PORSCHE in which the Complainant has trademark rights (see also Compagnie Générale des Etablissements Michelin v. Trendimg, WIPO Case No. D2010-0484; Köstrizer Schwarzbierbrauerei v. Macros-Telekom Corp., WIPO Case No. D2001-0936; Laboratoire Pharmafarm (SAS) v. M. Sivaramakrishan, WIPO Case No. D2001-0615 and cases cited therein).
For all these reasons, the Panel finds that the Complainant has fulfilled the first element under paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Based on the submissions and materials filed in this case, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.
The Respondent has not provided any evidence of circumstances specified in paragraph 4(c) of the Policy or of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name. Specifically, the Panel finds no evidence that the Respondent has been or is commonly known by the disputed domain name. The Respondent is neither affiliated with the Complainant nor has a license to use its trademark.
Given the Complainant's worldwide interests in its trademark and the Respondent's reference to the Complainant's products on the website, the Panel is convinced that the Respondent was aware of the Complainant when registering the disputed domain name and when it began using it.
The Respondent has not rebutted the Complainant's allegations and has not provided the Panel with any explanations as to the Respondent's rights or legitimate interests. On the contrary, it appears to the Panel that the Respondent is unfairly capitalizing on the reputation and goodwill established by the Complainant (see, e.g., Edmunds.com, Inc. v. Digi Real Estate Foundation, WIPO Case No. D2006-1043; Microsoft Corporation v. Global Net 2000, Inc., WIPO Case No. D2000-0554). The Respondent has directed the disputed domain name to its own website created to look nearly identical to the website of the Complainant's official importer in the UK.
Given the high reputation of the Complainant's trademark, the Panel believes that the disputed domain name has been registered by the Respondent only in order to capitalize on the Complainant's reputation and goodwill by redirecting Internet traffic intended for the Complainant away from it to the Respondent's website to generate income. This is supported by the fact that the Respondent apparently registered also the domain name <porschecenters.co.uk> which still resolves to such website. Such behaviour cannot constitute a bona fide or legitimate use of the disputed domain name.
The Panel finds for these reasons that the Respondent has no rights or legitimate interests in the disputed domain name, and therefore, the requirement of paragraph 4(a)(ii) of the Policy is met.
C. Registered and Used in Bad Faith
The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. The Policy, paragraph 4(b) sets forth four non-exclusive circumstances, which evidence bad faith registration and use of domain names:
(i) circumstances indicating that the Respondent has registered or has 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 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) 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 online 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 of a product.
According to the materials brought before the Panel, the Panel finds that the disputed domain name has been registered and is being used by the Respondent in bad faith in accordance with paragraph 4(b)(iv) of the Policy.
It is a principle considered under prior UDRP decisions (see, for instance, Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806; Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022) and under the Policy (see paragraph 2), that a domain name registrant represents and warrants to the concerned registrar that to its knowledge, the registration of the disputed domain name will not infringe the rights of any third party.
Given the notoriety of the Complainant due to its strong presence especially in the town where the Respondent apparently is located and the fact that the Respondent refers to the Complainant and its products on the website to which the disputed domain name resolves, the Panel finds that the Respondent must have been well aware of the Complainant's trademark and its products when it registered the disputed domain name (see, Liseberg AB v. Administration Local Manage Technical, WIPO Case No. D2003-0864). Therefore, the Panel is convinced that the Respondent registered the disputed domain name in bad faith.
The Panel finds further, that the Respondent is also using the disputed domain name in bad faith.
The Respondent has directed the disputed domain name to a website which is nearly identical to the website of the Complainant's official importer in the UK. The differences between these two websites are very difficult to recognize and will likely be overlooked by most Internet users.
Internet users often combine trademarks and descriptive words in their search engine to narrow down their search results. Such combination could consist of the terms such as "Porsche" and "SK". If the Respondent's website appears among the search results, then Internet users could believe that when visiting the Respondent's website, that it is either the website of the Complainant or an authorized distributor or importer in Slovakia. Internet users have good reasons to believe that this is the case because the design of the website to which the disputed domain name resolves is a copy of the website of the Complainant's distributor in the UK. Also other official websites of the Complainant feature these design elements.
The Panel believes that the only reason for this would be to profit from the Complainant's trademark (see also Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912). Therefore, the Panel is convinced that the Respondent's only purpose was to attract for commercial gain Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website.
Another indication for the Respondent's bad faith behavior is, that he apparently registered at least one other domain name featuring the Complainant's PORSCHE trademark (<porschecenters.co.uk>).
Moreover, the Respondent has apparently provided inaccurate contact details when it registered the disputed domain name or failed at least to correct such false contact details. In accordance with the Panel's search in the online Commercial Register of Stuttgart, Germany, where the Respondent is apparently located, there is only one Porsche GmbH company (the acronym "GMBH" stands for a limited liability company) under the given street address. This company is an affiliate of the Complainant. Furthermore, the number "1 null" (in English "1 zero") indicated as part of the street address is very uncommon in Germany and thus, as well an indication for a false address. Therefore, the Panel notes that the Respondent may have given incorrect contact details to frustrate or at least to delay these proceedings.
Given all facts and circumstances of this case, the Panel finds therefore, that the disputed domain name was registered and is 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 disputed domain name <porsche-sk.com> be transferred to the Complainant.
Date: July 12, 2015