WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dr. Ing. h.c. F. Porsche AG v. Domain Admin, Whois Privacy Corp.
Case No. D2017-0406
1. The Parties
The Complainant is Dr. Ing. h.c. F. Porsche AG of Stuttgart, Germany, represented by Lichtenstein, Körner and Partners, Germany.
The Respondent is Domain Admin, Whois Privacy Corp of Nassau, New Providence, Bahamas.
2. The Domain Name and Registrar
The disputed domain name <porsche-design-watch.com> ("Domain Name") is registered with Internet Domain Service BS Corp (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 1, 2017. On March 1, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 3, 2017, 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 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 22, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 11, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 12, 2017.
The Center appointed Olga Zalomiy as the sole panelist in this matter on April 28, 2017. 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 is a maker of sports cars. It has used the PORSCHE trademark for more than 70 years. The Complainant owns trademark registrations for PORSCHE and PORSCHE DESIGN marks, for example, German Trademark Registration No. 643195 (for PORSCHE), registered on August 26, 1953, and International Registration No. 456717 (for PORSCHE DESIGN), registered on July 29, 1980.
The Respondent registered the Domain Name on October 5, 2016. The Domain Name directs to a website that sells allegedly fake Porsche Design watches.
5. Parties' Contentions
A. Complainant
The Complainant claims that the Domain Name is identical or confusingly similar to its trademark because it incorporates the PORSCHE DESIGN trademark in its entirety and addition of the word "watch" to the trademark in the Domain Name only increases the confusion.
The Complainant argues that the Respondent has no rights or legitimate interests in respect of the Domain Name because the Respondent does not use or has not made any preparations to use the Domain Name in connection with bona fide offering of goods or services. The Complainant claims that there has never been any business relationship between the Parties and the Respondent is not commonly known by the Domain Name.
The Complainant alleges that the Domain Name was registered and is being used in bad faith because it is offering fake merchandise and the website associated with the Domain Name fails to disclose absence of any relationship between the Complainant and the Respondent. The Complainant claims that the Domain Name resolves to a website, which imitates an online store operated by the Complainant or its official distributor.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the UDRP, to succeed in this proceeding, the Complainant must prove each of the following elements with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
A. Identical or Confusingly Similar
The Complainant established its rights in the PORSCHE DESIGN mark by submitting a copy of the mark registration, International Registration No.456717, registered on July 29, 1980. The Complainant also established its rights in the PORSCHE trademark by submitting numerous copies of trademark registrations for the PORSCHE trademark, such as German Trademark registration No. 643195, registered on August 26, 1953.
The Domain Name, which consists of the Complainant's PORSCHE DESIGN mark, the word "watch", two hyphens between the words "porsche" and "design" and between the words "design" and "watch" and the generic Top-Level Domain ("gTLD") ".com", is confusingly similar to the Complainant's trademark because it incorporates the Complainant's mark in its entirety. It is well established that the gTLD is generally disregarded under the confusing similarity test for purposes of the UDRP1 and addition of a descriptive word, such as the word "watch" or non-distinctive elements, such as hyphens, to the trademark is insufficient to dispel the confusing similarity.2 Consequently, the Panel finds that the Domain Name is confusingly similar to the Complainant's PORSCHE DESIGN mark.
The Panel finds that the Complainant has satisfied the first element of the UDRP.
B. Rights or Legitimate Interests
To prove the second UDRP element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in respect of the domain name and, once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence it has rights or legitimate interests in the domain name.3 Where the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the UDRP.4
Paragraph 4(c) of the UDRP enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
"Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to it of the dispute, the Respondent's use of, or demonstrable preparations to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the Domain Names, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
It is undisputed that the Complainant has not licensed or authorized the Respondent to use the PORSCHE or PORSCHE DESIGN trademarks for any purpose. It is also undisputed that the Respondent is not commonly known by the Domain Name. Finally, it is uncontested that the Respondent is not using the Domain Name in connection with a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain. The Domain Name directs to a website, which offers for sale allegedly fake PORSCHE DESIGN watches. Therefore, the Panel finds that the Complainant has made out a prima facie case and the Respondent failed to rebut it.
The Panel finds that the Complainant has satisfied the second element of the UDRP.
C. Registered and Used in Bad Faith
It is well established, that the registration of a well-known mark as a domain name is clear indication of bad faith in itself, even without considering other elements. See The Gap, Inc. v Deng Youqian, WIPO Case No. D2009-0113. Here, the Respondent registered the Domain Name, which incorporates the Complainant's well-known mark in its entirety. It is undisputed that the Respondent is using the Domain Name to direct to the website offering for sale allegedly fake goods bearing the Complainant's trademarks. Using the Domain Name to intentionally attract Internet users to a website for commercial gain, in an effort to trade on the Complainant's goodwill, is evidence of bad faith registration and use under paragraph 4(b)(iv) of the UDRP. Consequently, the Panel finds that Domain Name was registered and is being used in bad faith.
The Panel finds that the Complainant has satisfied the third element of the UDRP.
7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <porsche-design-watch.com>, be transferred to the Complainant.
Olga Zalomiy
Sole Panelist
Date: May 11, 2017
1 Paragraph 1.2., WIPO Overview 2.0.
2 Paragraph 1.9., WIPO Overview 2.0.