WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dr. Ing. h.c. F. Porsche Aktiengesellschaft v. Domain By Proxy, LLC / Celio Garcera, EURO COC Ltd / Celio Triay
Case No. D2020-0045
1. The Parties
Complainant is Dr. Ing. h.c. F. Porsche Aktiengesellschaft, Germany, represented by Kopecky & Schwarz, France.
Respondent is Domain By Proxy, LLC, United States / Celio Garcera, EURO COC Ltd, United Kingdom / Celio Triay, United Kingdom.
2. The Domain Names and Registrar
The disputed domain names <coc-porsche.net> and <homologationporsche.com> (the “Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed in French with the WIPO Arbitration and Mediation Center (the “Center”) on January 10, 2020. On January 10, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On January 13, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on January 22, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. That same day the Center sent an email communication in English and French, informing the Parties the language of the registration agreement is French and inviting the Parties to submit their preference as to the language of the proceeding. On January 22, 2020, the Center also sent an email communication to Complainant notifying it of an administrative deficiency in its Complaint. Complainant filed an amended Complaint on January 24, 2020, requesting that French be the language of the proceeding. Respondent did not submit any comments. On January 31, 2020, in response to a notification by the Center that the administrative deficiency had not been cured, Complainant filed a second amended Complaint.
The Center verified that the Complaint together with the amended Complaints 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 Respondent of the Complaint in both French and English, and the proceedings commenced on February 11, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 2, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 3, 2020.
The Center appointed Robert A. Badgley as the sole panelist in this matter on March 15, 2020. 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.
Complainant requested that the language of the proceedings be French, even though the registration agreements between Respondent and the Registrar are in English. Among other things, Complainant asserts that French is appropriate because the website to which the Domain Names resolve is in French. Respondent has not participated in this proceeding. Using its discretion, the Panel declines in this case to depart from the language in the registration agreements and will proceed in English. Among other things, Complainant is a large company with operations and markets throughout the world, and it surely has ample representatives capable of carrying on in English.
4. Factual Background
Complainant is a major and longstanding manufacturer of automobiles sold under the well-known trademark PORSCHE for many decades. Complainant holds numerous registered trademarks for PORSCHE in various jurisdictions, including international mark 179928 registered October 8, 1954, and European Union registration 000073098 registered December 12, 2000. Complainant also services automobiles under its PORSCHE family of trademarks. Complainant’s main website is at the domain name <porsche.com>, and Complainant owns numerous other domain names containing its famous mark PORSCHE.
The Domain Name <homologationporsche.com> was registered on February 26, 2016, and the Domain Name <coc-porsche.net> was registered on November 12, 2018. The registrants of the two Domain Names are Celio Garcera and Celio Triay. Both registrants list in the WhoIs database the same street address in London and the same telephone number. Both Domain Names resolve to the same website. Respondent has not disputed that the two registrants are in fact one and the same person. The Panel agrees with Complainant’s contention that they are the same person, and will regard and refer to them hereafter as “Respondent”.
The website to which the Domain Names resolve features Complainant’s PORSCHE mark and even its unique emblem. The site, presented in the French language, purports to offer consumers a Certificate of Conformity (known as “CoC” in English), a document which certifies that the product in question (here, an automobile) meets the required standards and specifications. Another term used to certify conformity with product standards is “homologation”. The website states: “COC Porsche est le document d’homologation official Porsche” (“COC Porsche is official Porsche homologation document”). Complainant asserts that it has no relationship with Respondent, that any certification offered by Respondent is fake, and that Respondent is infringing Complainant’s famous trademark for improper financial gain.
On August 16, 2019 and October 31, 2019, Complainant’s counsel sent Respondent cease-and-desist letters in connection with the Domain Names. These letters were never answered.
5. Parties’ Contentions
Complainant contends that it has satisfied all three elements required under the Policy for a transfer of the Domain Names.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to each of the Domain Names:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests 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 Panel concludes that Complainant has rights in the mark PORSCHE through longstanding registration and use. The Panel also finds that the Domain Names are confusingly similar to that mark. The Domain Names fully incorporate the distinctive and famous PORSCHE mark in its entirety and merely add a descriptive term (“CoC” or “homologation”) that may be associated with automobiles and automotive construction and repair. These additional terms do little or nothing to reduce the confusing similarity between the mark and the Domain Names.
Complainant has established Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
For each of the Domain Names, pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Names. Respondent has not come forward, either in this proceeding or in pre-dispute correspondence with Complainant’s counsel, to advance any legitimate basis for registering the Domain Names. It is undisputed that Complainant’s PORSCHE mark is well known, and that Respondent was not authorized to use that mark in the Domain Names or otherwise. The undisputed record also reflects that Respondent has constructed a website that seeks to mimic Complainant by using Complainant’s distinctive emblem and misrepresenting to consumers that the site offers “official” Porsche CoCs. This conduct is clearly illegitimate, if not fraudulent.
Complainant has established Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
For each of the Domain Names, paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent registered and used the Domain Names in bad faith. Given the fame of Complainant’s PORSCHE mark, the fact that PORSCHE does not correspond to a dictionary term but instead is fanciful, and the fact that Respondent liberally uses Complainant’s PORSCHE emblem throughout the website, it is certain that Respondent had Complainant’s mark in mind when registering the Domain Names. As respects bad faith use, the Panel reiterates its discussion on the “rights or legitimate interests” section above and finds Respondent’s conduct, on this undisputed record, to be in violation of the Policy, paragraph 4(b)(iv).
Complainant has established Policy, paragraph 4(a)(iii).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <coc-porsche.net> and <homologationporsche.com> be transferred to Complainant.
Robert A. Badgley
Date: March 23, 2020