WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dr. Ing. h.c. F. Porsche AG v. Alexandre Cruz, Availablemeridian Lda
Case No. D2017-1847
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 Alexandre Cruz, Availablemeridian Lda of Braga, Portugal.
2. The Domain Name And Registrar
The disputed domain name <porschecloud.com> (the “Domain Name”) 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 September 22, 2017. On the same day the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 25, 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 September 26, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 16, 2017. The Response was filed with the Center on October 13, 2017.
The Center appointed Geert Glas as the sole panelist in this matter on October 27, 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, Dr. Ing. h.c. F. Porsche AG, has been making well-known sports cars for more than 70 years.
The Complainant registered its <porsche.com> domain name on November 7, 1996.
The Complainant is the owner of an extensive number of trademark registrations worldwide (including Portugal, the domicile of the Respondent) for the trademark PORSCHE. The first registration of the PORSCHE trademark among the documents submitted to this Panel can be traced back to October 8, 1954 with international trademark registration number 179928.
GoDaddy’s WhoIs database shows that the Domain Name <porschecloud.com> was first registered on May 1, 2017, and that it is registered to the Respondent. The disputed domain name resolves to a parking page displaying advertising hosted by GoDaddy.com, LLC.
5. Parties’ Contentions
The following is a summary of the Complainant’s contentions.
The Complainant requests that the Domain Name be transferred to it on the following grounds:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant contends that the Domain Name is confusingly similar to its PORSCHE trademarks.
The Complainant contends in this respect that the Domain Name embodies the trademark PORSCHE in its entirety. The combination of the trademark PORSCHE with the descriptive element “cloud” does not diminish the risk of confusion.
(ii) The Respondent has no rights or legitimate interest in respect of the Domain Name.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name since (i) the Respondent is not using the Domain Name in connection with a bona fide offering of goods and services, (ii) the Parties are not in a contractual relationship, (iii) the Respondent is not commonly known by the Domain Name.
(iii) The Domain Name was registered and used in bad faith.
The Complainant contends that its mark PORSCHE is famous worldwide.
The Complainant contends that the Respondent displays an intention to profit from the brands of famous producers of sports cars as the Respondent also registered the domain name <ferraridot.com> that resolves to a website under construction.
The Complainant also contends that, prior to lodging the present complaint, it has called the Respondent in order to discuss a transfer of the Domain Name and that during this conversation, the Respondent offered to sell the Domain Name for a very high price.
Moreover, the Complainant also contends that the Respondent has confirmed he had not yet used the Domain Name but had plans to do so which he could not share with the Complainant.
The following is a summary of the Respondent’s contentions.
The Respondent is running a company selling supplements of vitamins, food products, beverages, dietetic products, and machinery and advertising articles. The Respondent’s company is also organising consulting and training activities and promoting events. His business being mainly organised around the online sale of the above-mentioned products, he needs domain names such as the disputed Domain Name to run this business.
The Respondent’s purpose has never been to collide with the mark PORSCHE because “Porsche” and “porschecloud” are two “completely different things” and because they are not competing on the same market.
The Respondent does not want to share any details about what he is planning to do with the Domain Name but claims that it will not be related to the mark PORSCHE.
The Respondent adds that he is not making any money out of the advertising displayed on the parking web site and that GoDaddy is responsible for this advertising.
Regarding his <ferraridot.com> domain name, the Respondent replies that he has never used this website.
The Respondent claims that the Complainant has never called him to discuss a transfer of the Domain Name and that should such call have taken place, the mention of a very high sales price to sell the Domain Name would have been meant as a joke.
The Respondent considers that he has a legitimate interest in the Domain Name since he paid for the Domain Name and it does not interfere with the mark PORSCHE.
The Respondent claims that he has never acted in bad faith and has never intended to damage the mark PORSCHE.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant prove each and all of the following three elements in order to be successful in these proceedings:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interest in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has demonstrated that it is the owner of numerous registered trademarks consisting of the term PORSCHE in numerous jurisdictions including Portugal.
The Domain Name incorporates the Complainant’s PORSCHE trademark in its entirety and differs from the PORSCHE trademark only in the addition of the suffix “cloud”. Several UDRP panel decisions have stated that wholly incorporating a complainant’s registered trademark in a domain name may be sufficient to establish confusing similarity and that the addition of a suffix may be disregarded for the purpose of assessing identity or confusing similarity, even when a generic term is added to the trademark (see e.g. GA Modeline S.A v. Mark O’Flynn; WIPO Case No. D2000-1424, Viacom International Inc. v. Erwin Tan; WIPO Case No. D2001-1440, eBay Inc. v. ebayMoving / Izik Apo; WIPO Case No. D2006-1307 ).
This is particularly so when the trademark is highly recognisable and famous, as is the case with the PORSCHE trademark (see e.g., The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113).
Accordingly, the Panel finds that the first element under paragraph 4(a)(i) of the Policy has been established.
B. Rights or Legitimate Interests
Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, the consensus view is that, once the complainant has made a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the Policy (see e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270; Dow Jones & Company, Inc., (First Complainant) and Dow Jones LP (Second Complainant) v. The Hephzibah Intro-Net Project Limited (Respondent), WIPO Case No. D2000-0704 and the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, section 2.1).
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name.
Indeed, based on the evidence submitted by the Complainant, the Panel finds that there is no evidence that the Respondent (i) has been commonly known by the Domain Name, (ii) has made a legitimate noncommercial use of the Domain Name, (iii) has used the Domain Name with a bona fide offering of goods and services or (iv) was in a contractual relationship with the Complainant.
Moreover, the Respondent has failed, in his contentions, to demonstrate any evidence of his rights or his legitimate interests in respect of the Domain Name.
The Respondent argues that he has a legitimate interest in the Domain Name since he has paid for it. This argument does not adequately address the notion of rights or legitimate interests under the Policy. Indeed, it does not make any sense to consider that anyone registering a domain name would have rights or legitimate interests in respect of that domain name because of the mere fact that it was paid for. Moreover, such argument amounts to making the UDRP procedure meaningless as every respondent in a UDRP case would always be able to claim rights or legitimate interests in a disputed domain name.
The Respondent also claims that he has a project for the Domain Name in a different sector than the one in which the Complainant is active but that he cannot yet disclose his plans. The Panel can only conclude that the Respondent not only fails to demonstrate that he has used the Domain Name in a way which could grant him rights or legitimate interests in respect of the Domain Name but even fails to demonstrate that the Respondent has plans to do so.
Accordingly, the Panel finds that the second element under paragraph 4(a) (ii) of the Policy has been established
C. Registered and Used in Bad Faith
The Panel turns to the question of whether the Domain Name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy describes some circumstances which, if found to exist, will be evidence of the registration and use of the Domain Name in bad faith. They are presented in the alternative and consist of a non-exhaustive list of indicia of 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) circumstances indicating that 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) circumstances indicating that the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s 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 the respondent’s website or location or of a product or service on the respondent’s website or location.”
Previous UDRP panels have ruled that in appropriate circumstances, bad faith is established where a complainant’s trademark has been shown to be well known or in wide use at the time of registering a domain name (see, e.g., The Gap, Inc. v. Deng Youqian, supra; Caesars World, Inc. v. Forum LLC., WIPO Case No. D2005-0517; and Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556). Several other UDRP panel decisions have already determined that the PORSCHE mark is a famous trademark (see, e.g. Dr. Ing . h.c.F Porsche AG v.Gary Charles Brown, a k a Charlie Brown, a k a Gary Charlie Brown, WIPO Case No. D2001-0919; Dr. Ing . h.c. F Porsche AG v. Whois Agent, Domain Whois Protection Service / jiang lei, WIPO Case No. D2014-0389 and Dr. Ing. h.c. F Porsche AG v. Manuel Dasilva, WIPO Case No. D2014-0672). Given that the PORSCHE mark is well known and has been widely used for several decades, the Panel is of the opinion that it is highly unlikely that the Respondent did not know of the Complainant’s trademarks at the time the Domain Name was registered.
Therefore, under these circumstances, the Panel is of the opinion that the Respondent could not have been unaware of the PORSCHE trademark and of the Complainant’s rights in this trademark at the time of registering the Domain Name.
Consequently, the Panel finds that the Respondent registered the Domain Name in bad faith.
The Complainant alleges that it called the Respondent and that during this conversation, the Respondent tried to sell the Domain Name at a very high price. The Respondent claims that he never received such call, and that should such call have taken place, the proposition to sell the Domain Name for such high price would have been meant as a joke. Since neither party has sought to prove with evidence that the call took place or did not take place, this Panel will not infer any consequences from the existence (or non-existence) of this call.
Similarly, the Complainant mentions the fact that the Respondent registered several other domain names including <ferraridot.com>. It is however unclear whether the Complainant alleges that this amounts to a pattern of abusive conduct. In any event, the Panel need not infer any consequences from the registration of this domain name.
However, the Panel finds that the Domain Name bears no relationship whatsoever to the Respondent’s name or business and in fact has no other meaning except for incorporating the trademark of the Complainant. In this regard, previous UDRP panels have found that where a domain name is so obviously connected with a complainant, its very use by someone with no connection with said complainant suggests opportunistic bad faith (see e.g., Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Legacy Health System v. Nijat Hassanov, WIPO Case No. D2008-1708).
As the Domain Name is parked and as the website to which it resolves displays advertising, the Panel finds that the Respondent attempts to attract Internet users for commercial gain by creating a likelihood of confusion with the Complainant’s trademark. Previous panels have recognized that the use of a third party’s trademark to generate revenue from Internet advertising can constitute registration and use in bad faith as a classic illustration of the conduct condemned by paragraph 4(b)(iv) of the Policy above (see e.g., Volvo Trademark Holding AB v. Unasi, Inc., supra). It does not matter whether the Respondent is the immediate beneficiary of the commercial gain or whether the commercial gain is accrued elsewhere. It is sufficient that a third party stands to reap the profits of the Respondent’s wrongful conduct (see, Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912 and Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273).
The Panel is of the opinion that the Respondent’s holding of the Domain Name amounts to a use in bad faith of the Domain Name. Indeed, (i) the PORSCHE trademark is widely known and has a strong reputation (ii) the Respondent has not provided evidence of any actual or contemplated good faith use and (iii) the Panel cannot conceive any actual or contemplated active use of the Domain Name by the Respondent that would not be illegitimate.
The above elements lead the Panel to conclude that, by using the 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 PORSCHE 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.
Consequently, the Panel finds that the Respondent used the 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 <porschecloud.com> be transferred to the Complainant.
Date: November 16, 2017