WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dr. lng. h.c. F. Porsche AG v. Marcel Francois van der Werf
Case No. D2018-0381
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 Marcel Francois van der Werf of Oosterwolde, Netherlands, self-represented.
2. The Domain Name and Registrar
The disputed domain name <porsche.website> 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 February 20, 2018. On February 20, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 21, 2018, 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 February 23, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 15, 2018. The Respondent submitted numerous informal email communications between February 26, 2018 and March 21, 2018. The Respondent did not submit any formal response. Accordingly, the Center notified the Parties of the commencement of Panel appointment process on March 20, 2018. The Center received several further communications from the Respondent subsequent to that date.
The Center appointed Adam Samuel as the sole panelist in this matter on March 27, 2018. 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 manufactures sports cars and other associated goods. It owns a number of trademarks for the name PORSCHE including United States of America trademark registration number 0618933, registered on January 10, 1956. The Complainant owns a number of domain names which it uses to market its goods, including <porsche.com>, registered on November 7, 1996.
The disputed domain name was registered on January 2, 2016. Evidence annexed to the Complaint indicates that the disputed domain name was previously parked and offered for sale. At the time of this decision, the disputed domain name resolves to a website displaying the message “website coming soon!”
5. Parties’ Contentions
These are the Complainant’s contentions.
The disputed domain name embodies the PORSCHE trademark fully and identically and the Top-Level Domain “.website” which adds to the confusion by suggesting that the disputed domain name contains an official website of the Complainant.
The Respondent has never had a business relationship with the Complainant and is not commonly known by the disputed domain name. Non-use of the disputed domain name for more than a year does not constitute a legitimate interest. The Respondent owns a number of domain names, or has in the past, indicating his involvement in online sales, particularly jewelry.
Immediately after registering the disputed domain name, the Respondent put it up for sale. Four months later, the Complainant used the disputed domain name to present links that referred to a commercial platform of price comparison website “www.autoa.nl” apparently to earn click-through fees. In 2017, the Respondent removed all the content from the website to which the disputed domain name resolves and connected it instead to his eBay account where he offered the disputed domain name for sale for EUR 9,999,999. The Respondent posted a message on the Complainant’s Facebook career and recruiting account to present a link to his eBay offer for the disputed domain name.
The Respondent has registered and is using the disputed domain name in bad faith because he offered and is still offering that domain name for sale for a valuable consideration in excess of any plausible costs related to its registration or holding. The eBay sales offer and Facebook posting are evidence of his awareness of the Complainant and its famous trademark PORSCHE.
The Respondent replied to the Complainant’s contentions, making a number of assertions, comments and requests. What follows below is a summary of the salient points that relate to the Complaint.
There has been no trademark infringement because a domain name is not a car. “Porsche” is a generic name. The disputed domain name consists only of alphabet letters and a generic family name. The Complainant is a famous sports car manufacturer but not an Internet company. The Complainant has no goodwill or credit after it has committed fraud in relation to diesel.
The disputed domain name is owned by the Respondent for family noncommercial use. The Respondent has called his daughter “Porsche” and the disputed domain name is for his daughter.
The Complainant is engaged in a campaign of intimidation, stalking and blackmail in bringing the Complaint. If the Complainant wants to own what is the Respondent’s property, the Complainant will have to pay properly for it. Since this would be the case for a second-hand Porsche vehicle being offered for sale on eBay, this should be the position as regards a domain name.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed 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 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 disputed domain name consists of the Complainant’s trademark and the generic Top-Level Domain (“gTLD”) “.website”. The gTLD is irrelevant here because it does not affect the meaning of the disputed domain name.
It is irrelevant under the Policy as to whether there has been a trademark infringement. It makes no difference as to whether a car could be sold on ebay using the Complainant’s trademark. The Policy itself draws no distinctions on this element between generic words, family names and other terms. Nor is it concerned with the Complainant’s goodwill.
For all these reasons, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
Both Parties agree that the Complainant and the Respondent have never had any commercial connection with each other. The Respondent has asserted without supplying any evidence that his daughter has the first name “Porsche”.
It would have been easy for the Respondent to have supplied a birth certificate if that was the case. In the light of repeated anti-German and anti-Complainant remarks made by the Respondent in this case, it is implausible that the Respondent has named his child “Porsche”. The only rights or legitimate interests in respect of the disputed domain name that the Respondent appears to have is based on his ownership of the disputed domain name. Having a daughter named “Porsche” would not represent “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”, the Respondent being known by the disputed domain name or a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
All the Respondent seems to have done with the disputed domain name is try to sell it in a variety of different ways.
For all these reasons, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
Almost as soon as the Respondent registered the disputed domain name, he put the disputed domain name up for sale for figures close to EUR 10 million. He has continued to do this in a variety of different ways without making any other real use of the disputed domain name.
These are “circumstances indicating that [the Respondent has] registered or … 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 [his] documented out-of-pocket costs directly related to the domain name.” This is evidence of bad faith registration and use under paragraph 4(b)(i) of the Policy.
The Respondent has raised a number of points about the Complainant and its behavior. These are irrelevant to a determination under the Policy of the type that the Panel is making here. The registration agreement to which the Respondent agreed when registering the disputed domain name states that in the event the Respondent did not comply with the Policy, he was at risk of losing the disputed domain name.
The Respondent registered the disputed domain name, knowing of the Complainant’s trademark rights over the name that constituted the disputed domain name with the exception of the necessary gTLD and then sought almost immediately to sell the disputed domain name for a sum vastly in excess of any expenses that he could have incurred in connection with the disputed domain name.
For these reasons, the Panel concludes that the Respondent registered and is using the disputed domain name in bad faith.
The Panel in general rejects as either ill-founded or irrelevant to these proceedings the allegations made by the Respondent.
D. Reverse Domain Name Hijacking and Other Allegations of Abuse by the Complainant
The only remedy available to the Respondent in proceedings of this type is a finding of reverse domain name hijacking. This is applicable where a complaint has been brought in bad faith. Here, the Complaint has been upheld and so was clearly not brought in bad faith. There is, therefore, no scope here for any adverse finding about the Complainant.
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.website> be transferred to the Complainant.
Date: April 12, 2018