WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dr. Ing. h.c. F. Porsche AG v. Emanuel Goldszmidt/Registration Private, Domains By Proxy, LLC
Case No. D2015-1756
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 Emanuel Goldszmidt of Aventura, Florida, United States of America ("United States") / Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States.
2. The Domain Name and Registrar
The disputed domain name <porsche-design-tower.com> is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 2, 2015. On October 2, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 3, 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. The Center sent an email communication to the Complainant on October 6, 2015 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 on the same day.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on October 9, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 29, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 30, 2015.
The Center appointed Tuukka Airaksinen as the sole panelist in this matter on November 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.
4. Factual Background
The Complainant has been a maker of sports cars for more than 70 years, utilizing "Porsche" as the prominent and distinctive part in its trade name. It also owns numerous registered trademarks consisting of or incorporating the word PORSCHE, such as the Community Trademark No. 000073098 PORSCHE (fig), registered in several classes on December 12, 2000.
The Complainant is also the owner of the trademark PORSCHE DESIGN, registered, for example, as a federal trademark No. 3635423 in several classes on June 9, 2009 in the United States.
The disputed domain name was registered on November 18, 2011.
5. Parties' Contentions
The Complainant has licensed its trademark PORSCHE DESIGN to Porsche Lizenz- und Handelsgesellschaft mbH & Co. KG. This company, owned and operated by members of the Porsche family, is one of the world's leading and most prestigious design companies. Its product portfolio reaches from consumer products to architecture and construction, in particular the design of Porsche Design Towers. The first such Tower is currently being built in Miami, Florida, United States in collaboration with a local developer and due to open in 2016. Plans for the Porsche Design Tower Miami were revealed in early November 2011 and widely reported and discussed both on- and offline.
The Respondent has no right or legitimate interest in respect of the disputed domain name. There is no use or any preparations to use the disputed domain name with a bona fide offering of goods or services. There is not and has never been a business relationship between the parties. The Respondent is not commonly known by the disputed domain name. The disputed domain name has in its almost four years of existence never redirected to a website. Instead, a standard page just announces a future website.
The Respondent Emanuel Goldszmidt is a professional realtor based in Miami, Florida, United States, who has exploited his knowledge of the local real estate market and intends to exploit the disputed domain name by either blackmailing the Complainant into buying his services as a realtor or the disputed domain name.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
In order to obtain the transfer of a domain name, a complainant must prove the three Policy elements, regardless of whether the respondent files a response to the complaint. The first element is that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. The second element a complainant must prove is that the respondent has no rights or legitimate interests in respect of the domain name. The third element a complainant must establish is that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires that the Complainant establishes that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. Consequently, the Complainant must prove that it has rights to a trademark, and that the disputed domain name is identical or confusingly similar to this trademark.
The disputed domain name incorporates the Complainant's trademark PORSCHE in its entirety. The Complainant's trademark PORSCHE is combined with two common English words, namely "design" and "tower", all connected by hyphens. Moreover, the disputed domain name incorporates also the Complainant's trademark PORSCHE DESIGN, with the addition of the common English word "tower".
According to paragraph 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), the Panel finds that the disputed domain name is confusingly similar to the Complainant's trademarks and hence the first element of the Policy has been fulfilled.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires that the Complainant establishes that the Respondent has no rights or legitimate interests to the disputed domain name.
The consensus view among UDRP panels is that once a complainant has made a prima facie showing indicating the absence of the respondent's rights or legitimate interests in a disputed domain name the burden of production shifts to the respondent to come forward with evidence of such rights or legitimate interests. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270 and paragraph 2.1 of the WIPO Overview 2.0.
The Complainant has submitted that it is not affiliated with the Respondent, it has not authorized the Respondent to use the trademarks PORSCHE or PORSCHE DESIGN or the disputed domain name, and that the Respondent is not commonly known by the disputed domain name. The Respondent has not rebutted these arguments.
The Panel finds that the Complainant has made a prima facie case that has not been rebutted by the Respondent. Therefore, the Panel finds that the second element of the Policy is fulfilled.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the Complainant establishes that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy provides that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
"(i) circumstances indicating that [the respondent has] registered or has 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 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 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 or 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 on [the respondent's] website or location."
The Complainant has submitted that its licensee is involved in an architecture and construction project to design and build Porsche Design Tower in Miami, Florida, United States, where the Respondent Emanuel Goldszmidt operates as a professional realtor. The Complainant has also submitted that the Respondent Emanuel Goldszmidt registered the disputed domain name just days after the plans for the Porsche Design Tower became public.
The Panel considers that the trademark PORSCHE is a widely known trademark and therefore, the Respondent Emanuel Goldszmidt must have been aware of it when registering the disputed domain name. Considering the undisputed submissions that the same Respondent is a professional realtor in the same city in which the construction of the Porsche Design Tower takes place, and that the disputed domain name was registered just days after the construction project was announced, the Panel considers that the Respondent has registered and is using the disputed domain name in order to commercially benefit from it and the reputation of the Complainant's trademark.
Also, the fact that the disputed domain name currently displays a "coming soon" message and is therefore passively held, does not preclude a finding of bad faith, in light of the circumstances of this case (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
Based on the above, the Panel finds that the disputed domain name was registered and is being used in bad faith, and therefore also the third element of the Policy is fulfilled.
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-design-tower.com> be transferred to the Complainant.
Date: November 20, 2015