WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dr. Ing. h.c. F. Porsche AG v. Dealer Dot Com, Inc.
Case No. D2016-1900
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 Dealer Dot Com, Inc. of Burlington, Vermont, United States of America, represented by Downs Rachlin & Martin, PLLC., United States of America.
2. The Domain Name and Registrar
The disputed domain name <porschedigital.com> (the “Domain Name”) is registered with Network Solutions, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 19, 2016. On September 19, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 20, 2016, 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 21, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 11, 2016. The Response due date was extended to October 15, 2016 at the request of the Respondent pursuant to paragraph 5(b) of the Rules. The Response was filed with the Center on October 14, 2016.
The Center appointed Nicholas Smith as the sole panelist in this matter on October 24, 2016. 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 German manufacturer of sports cars and for over 70 years has utilized the word “Porsche” as a prominent part of its trade name. It operates a website at “www.porsche.com”.
The Complainant holds trade marks for PORSCHE (the “PORSCHE Mark”) in various countries around the world and in particular the United States of America, where the PORSCHE Mark was first registered on January 10, 1956 for automobiles and parts thereof.
The Domain Name was created on September 11, 2008. It does not resolve to an active website. The Respondent is a United States company that provides digital solutions to automotive original equipment manufacturers “OEMs”, dealer groups, retailers and agencies. Its digital solutions include integrated platforms of advertising, website and managed services products.
5. Parties’ Contentions
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant’s PORSCHE Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the PORSCHE Mark having registered numerous marks containing “porsche” including the PORSCHE Mark in the United States on January 10, 1956.
The Domain Name consists of the PORSCHE Mark in its entirety with the addition of the descriptive term “digital” which indicates electronic content related to the Complainant. The Domain Name is therefore confusingly similar to the PORSCHE Mark.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Complainant has not granted any license or authorization for the Respondent to use its marks. The Respondent is not commonly known by the Domain Name. The Respondent has held the Domain Name for eight years and has not used the Domain Name or made any preparations to use the Domain Name for a bona fide purpose.
The Domain Name was registered and is being used in bad faith. The Respondent as a provider of services for car dealers was aware of the Complainant and its name and trade mark. This is a case of passive holding since the Respondent as a provider of online sales platforms was planning to sell the Domain Name to a customer who necessarily would be a competitor of the Complainant.
The Respondent is in the business of providing digital solutions to automotive OEMs dealer groups, retailers and agencies. In the course of its business it uses domain names that incorporate automotive trade marks, including the PORSCHE Mark, in connection with marketing and providing its services to its customers. Accordingly the Respondent has a legitimate interest in the Domain Name.
The Respondent is not a competitor of the Complainant. Among the Respondent’s customers are automotive OEMs and dealers, including automotive dealers who are authorized to market and sell cars under the Complainant’s PORSCHE Mark. The Respondent is not in the business of selling domain names to its customers or any other third parties. None of the circumstances outlined in Paragraph 4(b) of the Rules is present here.
The Respondent did not register the Domain Name for the sole purpose of selling it to a competitor of the Complainant. Nor can the Complainant establish that Respondent’s registration of a single domain name incorporating its mark impedes its ability to reflect its mark in suitable domain names.
The Complainant alleges that the Respondent’s “passive holding” is sufficient to establish bad faith registration and use. The prevailing view, however, is that passive holding alone is not evidence of either good or bad faith. As one panel stated, the principle established in Telstra Corporation v. Nuclear Marshmallows, WIPO Case No. D2000-0003 “does not apply to every case of passive holding,” but is instead “dependent upon the specific facts and circumstances of the case.” The context of the facts and circumstances of this case do not allow the Panel to infer bad faith registration and use. Because the Respondent has not acted improperly in connection with the registration of the Domain Name, and has demonstrated with this Response that it does not intend to use the Domain Name improperly, the Complaint should be denied.
6. Discussion and Findings
A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the PORSCHE Mark, having registrations for PORSCHE as a trade mark in the United States of America and elsewhere.
The Domain Name consists of the PORSCHE Mark in its entirety with the addition of the descriptive word “digital”. Other UDRP panels “have repeatedly held that the addition of a generic word to a recognized mark creates a confusing similarity between the domain name and the mark of the [c]omplainant.” Bank of Nova Scotia v. Whois Protection, WIPO Case No. D2007-0884. See also Valero Energy Corporation v. Navigation Catalyst Systems, Inc., WIPO Case No. D2011-1227. The Panel finds that the Domain Name is confusingly similar to the Complainant’s PORSCHE Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy 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 you 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 (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 are making 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 Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the PORSCHE Mark or a mark similar to the PORSCHE Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name.
There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial use. While the Panel acknowledges the evidence in the Response that the Respondent provides digital services to entities that may be authorized to use the PORSCHE Mark, in the present case the Respondent has held the Domain Name for eight years and there is no evidence that it has ever used or made demonstrable preparations to use the Domain Name for a bona fide offering of goods or services.
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent’s evidence and submissions have not been sufficient to rebut the presumption that it lacks rights or legitimate interests. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in 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’s registration to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) The Respondent has registered the Domain Name in order to prevent the owner of the trade mark 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) The Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line 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. (Policy, paragraph 4(b)).
The Panel notes that the above examples are not exclusive and other circumstances may exist that demonstrate the registration and use of a domain name in bad faith.
The Panel finds that it is likely that the Respondent was aware of the Complainant at the time the Domain Name was registered. The Respondent provides digital solutions to automotive companies, which would involve a working knowledge of major car companies, one of which is the Complainant. Furthermore the PORSCHE Mark is a coined mark with no generic or descriptive meaning. The Respondent does not provide, nor is it apparent to the Panel, any reason why the Domain Name was registered other than by reference to the Complainant. The registration of the Domain Name in awareness of the Complainant and any rights it had at the time in the PORSCHE Mark and in the absence of rights or legitimate interests amounts to registration in bad faith.
The Domain Name is currently inactive. Telstra Corporation Limited v. Nuclear Marshmallows, supra, established that a panel must examine all the circumstances of the case to determine whether a respondent is acting in bad faith in circumstances where the domain name is unused. In this case the Respondent, despite filing a detailed response denying that it has acted in bad faith, has failed to provide an explanation as to why the Domain Name was registered in 2008 and has been held without any demonstrable preparations to use it for the past eight years.
The Respondent gives evidence that it provides services for automotive dealers who market and sell cars under the PORSCHE Mark and that it provides digital services to other Porsche dealers who maintain registrations for domain names that include the PORSCHE Mark; however, this does not explain the Respondent’s conduct in registering the Domain Name and holding onto the Domain Name (including renewing it) for eight years without any attempts to use it. Furthermore, in the absence of any explanation as to why the Domain Name was registered, the fact that the Respondent may provide services to entities that are authorised by the Complainant to register and/or use domain names that contain the PORSCHE Mark is irrelevant in the context of a dispute relating to the Respondent’s registration and passive holding of this particular Domain Name.
The Panel, in the absence of an explanation from the Respondent of its conduct, finds on the balance of probabilities that the Respondent has passively held the Domain Name with the intention of either:
(a) using the Domain Name to intentionally attempt to attract potential clients who are interested in having the Respondent develop a website for them using the Domain Name; or
(b) attempting to sell, rent, or otherwise transfer the Domain Name’ registration to the Complainant, a competitor of the Complainant, or a third party, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name.
The key fact in this matter is that the Respondent, without the permission of the Complainant or any rights of its own, has passively held the Domain Name for eight years with the likely purpose of benefiting from the presence of the PORSCHE Mark in the Domain Name and any goodwill or confusion that arises therein. The Panel finds that such conduct amounts to use in bad faith.
Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy.
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, <porschedigital.com> be transferred to the Complainant.
Date: October 28, 2016