WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dr. Ing. h.c. F. Porsche AG v. Harun Hussain
Case No. D2017-1652
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 Harun Hussain of Middlesbrough, Cleveland, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).
2. The Domain Names and Registrar
The disputed domain names <porschemiddlesbrough.com>, <porschesilverstone.com>, <porschestockton.com>, <porscheteesside.com> and <porschewolverhampton.com> are registered with 123-Reg Limited (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 24, 2017. On August 25, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 28, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September 4, 2017.
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 proceedings commenced on September 11, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 1, 2017. The Respondent did not submit any response save for its email communications dated September 11 and 13, 2017, which are not substantive. Accordingly, the Center notified the Parties that it would proceed to Panel Appointment on October 2, 2017.
The Center appointed Andrew F. Christie as the sole panelist in this matter on October 10, 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 has been a manufacturer of sports cars for more than 70 years, utilizing “Porsche” as the prominent and distinctive part in its trade name. The Complainant operates its website at “www.porsche.com”, and owns numerous registrations in various jurisdictions for the trademark PORSCHE, including a United Kingdom trademark registration (no. UK00000729217) dating from April 14, 1954, and a European Union trademark registration (no. 000073098) dating from December 12, 2000. The trade name “Porsche” and the PORSCHE trademark are known throughout the world, with a reputation for quality and performance. Porsche cars are distributed worldwide, and the only importer of Porsche cars in the United Kingdom is Porsche Cars Great Britain Limited, which is wholly owned by the Complainant. There are currently 34 Porsche Centres across the United Kingdom, including a Centre in Teesside that also services the nearby cities of Middlesbrough and Stockton. Other Porsche Centres are located in Wolverhampton and Silverstone.
The disputed domain name <porscheteesside.com> was registered on November 2, 2016, the day after various news websites announced the opening in 2017 of a new Porsche Centre at Teesside. The Complaint contains an undated screenshot showing that this disputed domain name resolved, at some unspecified date, to a parking page containing only the following text: “For all inquiries please contact us below: EMAIL: […]@porscheteeside.com”. As at the date of this decision, the disputed domain name resolves to a parking page containing only that text.
The disputed domain names <porschemiddlesbrough.com> and <porschestockton.com> were registered on July 4, 2017, and the disputed domain names <porschewolverhampton.com> and <porschesilverstone.com> were registered on July 9, 2017. The Complaint contains undated screenshots showing that each of these four disputed domain names resolved, at some unspecified date, to a parking page containing sponsored links, most or all of which were to goods or services unrelated to those offered by the Complainant. As at the date of this decision, each of these four disputed domain names resolves to a parking page advertising website-building services offered by the Registrar.
The Respondent left “likes” on the Facebook page of the Porsche Centre Teesside, which linked to the Respondent’s own Facebook page at which he described himself as “Teesside Window Cleaning”. The email contact for the Respondent provided in the WhoIs records of each of the disputed domain names uses the domain name <teessidewindowcleaning.co.uk>. The registrant of that domain name is VistaPrint Technologies Ltd, which has the same street address as that of the Respondent. According to the Complaint, VistaPrint Technologies Ltd is purportedly registered on the island of Bermuda, and has acquired a reputation for cybersquatting, having been the unsuccessful respondent in 34 cases filed with the Center in the years 2015 and 2016. According to the Complaint, the Respondent and VistaPrint Technologies Ltd are one and the same.
5. Parties’ Contentions
The Complainant contends that the each of the disputed domain names is confusingly similar to a trademark in which the Complainant has rights because each embodies the trademark PORSCHE in its entirety, combining it with the name of a city or a place which is descriptive of the location of a Porsche Centre.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of any of the disputed domain names because: (i) there is neither a use of, nor preparations to use, any of the disputed domain names in connection with a bona fide offering of goods or services; (ii) there is not, and has never been, a business relationship between the Complainant and the Respondent; (iii) the Respondent is not commonly known by any of the disputed domain names; and (iv) the use of four of the disputed domain names to resolve to parking pages with sponsored links does not constitute a legitimate interest in those disputed domain names.
The Complainant contends that each of the disputed domain names was registered and is being used in bad faith because: (i) the Respondent knew about the Complainant’s PORSCHE trademark, which is world famous; (ii) the Respondent demonstrated a special interest in cars and motorsports by following the Facebook page of the Porsche Centre Teesside, and by registering at least five domain name combinations all consisting of the PORSCHE trademark and the name of a city; (iii) this is a case of the Respondent having an intention to sell the disputed domain names and of engaging in a pattern of conduct of preventing the Complainant from reflecting its trademark in the disputed domain names; and (iv) the Respondent intentionally uses the disputed domain names to attract, for commercial gain, Internet users to the websites in order to earn pay-per-click fees.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Each of the disputed domain names consist of the entirety of the Complainant’s registered trademark PORSCHE and the name of one of the following cities or locations: Middlesbrough, Silverstone, Stockton, Teesside, Wolverhampton. The Panel finds the addition of the name of the city or location does not lessen the inevitable confusion of the disputed domain names with the Complainant’s trademark, particularly as the Complainant sells its goods and services in that city or at that location. The Panel finds that each of the disputed domain names is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and has not been authorized by the Complainant to use its PORSCHE trademark. The Respondent has not provided any evidence that it has been commonly known by, or has made a bona fide use of, any of the disputed domain names, or that it has, for any other reason, rights or legitimate interests in any of the disputed domain names. The evidence provided by the Complainant satisfies the Panel, on the balance of probabilities, that four of the disputed domain names were used to resolve to a parking page containing click-through advertising links to businesses unrelated to the Complainant. The Complainant has provided evidence that the fifth disputed domain name has been used solely to provide a contact email address for enquiries, presumably in respect of sale of the disputed domain name. According to the present record, therefore, none of the disputed domain names is being used in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in any of the disputed domain names.
C. Registered and Used in Bad Faith
Each of the disputed domain names was registered many decades after the Complainant first registered its PORSCHE trademark. The evidence on the record provided by the Complainant with respect to its use of its PORSCHE trademark, combined with the absence of any evidence provided by the Respondent to the contrary, is sufficient to satisfy the Panel that, at the time of registration of each of the disputed domain names, the Respondent knew of the Complainant’s PORSCHE trademark and knew that it had no rights or legitimate interests in the disputed domain names. Furthermore, the evidence on the record provided by the Complainant with respect to the Respondent’s use of the disputed domain names indicates that the Respondent has used four of the disputed domain names to attract, for commercial gain, Internet users to a website by creating confusion in the minds of the public as to an association between the websites and the Complainant. The fifth disputed domain name, <porscheteesside.com>, has been used to advertise an email address for any enquiries, presumably for the purpose of selling the disputed domain name for a sum in excess of the Respondent’s out of pocket expenses. Accordingly, the Panel finds that each of the disputed domain names has been 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 names <porschemiddlesbrough.com>, <porschesilverstone.com>, <porschestockton.com>, <porscheteesside.com> and <porschewolverhampton.com> be transferred to the Complainant.
Andrew F. Christie
Date: October 24, 2017