The Complainant is F. Porsche AG of Stuttgart, Germany, represented by Lichtenstein, Körner & Partners,,Germany.
The Respondent is GO 4 Travel International Kft. of Budapest, Hungary. 2. The Domain Name and Registrar
The disputed domain name is registered with OnlineNic, Inc. d/b/a China-C (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 12, 2011. On October 12, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 13, 2011, 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 for the disputed domain name. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 14, 2011.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 19, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 8, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 10, 2011.
The Center appointed Ladislav Jakl as the sole panelist in this matter on November 22, 2011. 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.
On the question of the language of the proceedings, the Registrar confirmed on October 13, 2011, that the language of registration agreement is English. Neither the Complainant nor the Respondent commented on this question. The Panel, taking into account the circumstances of this case and a number of recent UDRP decisions and the reasons cited therein (BrandStrategy, Inc. v. BusinessService Ltd.,WIPO Case No. D2007-0749; Laboratoire Biosthétique Kosmetik GmbH & Co. KG and MCE S.A.S. v. BusinessService Ltd.,WIPO Case No. D2007-1836), decides that the language of the administrative proceedings will be English. 4. Factual Background
The Complainant asserted, and provided evidence in support of the following facts, which the Panel finds established:
The Complainant is F. Porsche AG of Stuttgart, Germany. The Complainant has been a maker of sports cars for more than half of a century, utilizing “Porsche” as the prominent and distinctive part in its trade name, and it owns numerous trademarks consisting of, or incorporating, the word “Porsche”. The trademarks and trade name “Porsche” are known throughout the word and enjoy a reputation for high quality and excellent performance. PORSCHE cars are distributed worldwide through a network of official dealers, called Porsche Centrums, one of which is located at Budapest, Hungary. Over the years the Complainant has added various services to its car making business, for instance financing services and since 1995 luxury travel services, the later of which addressed at an international audience, including residents of Hungary, under the brand name “Porsche Travel Club”.
The Complainant owns trademark registrations for the PORSCHE marks throughout the world in connection with its automobiles and various services including travel agency services for organization, arrangements and reservations in connection with travel and hotels.
For example, the Complainant has been granted the following trademark PORSCHE registrations: United States Trademark Registration No. 0618933, registered January 10, 1956, (automobiles and parts thereof); German Trademark Registration No. 643195, registered October 8, 1954; International Registration No. 657048, registered August 27, 1996, (various services, including travel organization and reservation and travel agency services for reservation of hotel rooms); Community Trademark Registration No. 000073098, priority April 1, 1996, registered December 12, 2000, (various classes of goods and services, including travel arrangement and hotel reservations).
The disputed domain name was registered on January 29, 2010.
In accordance with paragraph 4(i) of the Policy, the Complainant requested the Panel, appointed in this administrative proceeding, to issue a decision that the disputed domain name be transferred to the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant argues that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights and that the disputed domain name registered by is essentially identical to the Complainant’s PORSCHE trademarks. The Respondent has simply taken the “Porsche” element, which the Complainant has used in a number of variations, added the words “travel” and “club” and the gTLD indicator “.com”.
The Complainant argues that the elements “travel” and “club” are merely descriptive in nature and the disputed domain name, in its entirety, is identical to the “Porsche Travel Club” services that the Complainant provides for its customers. Thus, the Complainant concludes, the disputed domain name is identical or confusingly similar to trademarks in which the Complainant has rights.
Moreover, the Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent argues that neither is there a use nor are there any preparations to use the disputed domain name with a bona fide offering of goods or services. Moreover there is not, and has never been, a business relationship between the parties. The Respondent is not commonly known by the disputed domain name. Also, the Respondent is not making noncommercial use of the domain name, rather it redirects to the website of a provider of web services.
And finally, the Complainant contends that the Respondent has registered and used the disputed domain name in bad faith. The Respondent has no legitimate interest in registering and using the disputed domain name, which so closely resembles a well-known and prestigious trade name and the trademarks of the Complainant. The intention to sell the domain name is indicated by Respondent´s reaction to the demands of the Complainant to transfer the disputed domain name. The Respondent did not even claim to have a defendable legal position but was immediately asking for a price that exceeds by far the registration costs. The Respondent knew that it would never get permission to use a domain name that clearly indicates a website operated by the Complainant itself, in particular not in connection with services of the “Porsche Travel Club” so the only explanation as to why the Respondent registered the contested domain name is that it just waited for the highest bidder to sell it.
Based on the foregoing, the Complainant concludes that: (i) the disputed domain name is identical and/or confusingly similar to the Complainant’s PORSCHE trademarks; (ii) the Respondent has no rights or legitimate interests in the disputed domain name; and (iii) the Respondent registered and is using the disputed domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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.
Paragraph 4(a) of the Policy states that the burden of proving that all three elements are present lies with the Complainant. A. Identical or Confusingly Similar
The Complainant owns trademark registrations for the PORSCHE marks throughout the world in connection with its business activities in the field of automobiles and parts thereof, various services, including travel organization and reservation and travel agency services for reservation of hotel rooms, various classes of goods and services, including travel arrangement and hotel reservations. For example , the Complainant has been granted the following trademark registrations: United States Trademark Registration No. 0618933, registered January 10, 1956, (automobiles and parts thereof); German Trademark Registration No. 643195, registered October 8, 1954; International Registration No. 657048, registered August 27, 1996, (various services, including Travel organization and reservation and Travel agency services for reservation of hotel rooms); Community Trademark Registration No. 000073098, priority April 1, 1996, registered December 12, 2000, (various classes of goods and services, including travel arrangement and hotel reservations).
The Panel finds that the disputed domain name exactly reproduces the Complainant’s PORSCHE trademarks. The Respondent has simply taken the “Porsche” element, and added the words “travel” and “club” and the gTLD indicator “.com”.
The Complainant argues that the elements “travel” and “club” are merely descriptive in nature and the disputed domain name, in its entirety, is identical to the “Porsche Travel Club” services that the Complainant provides for its customers. The Panel accepts the argument of the Complainant that the disputed domain name is identical or confusingly similar to trademarks in which the Complainant has rights. Moreover, the elements “travel” and “club” are merely descriptive in nature and the disputed domain name in its entirety is identical to the “Porsche Travel Club” services that the Complainant provides for its customers. UDRP panels consistently have found that incorporation of a trademark in its entirety may establish that a domain name is identical or confusingly similar to a complainant’s trademark. See Wal-Mart Stores, Inc. v. Gerry Senker,WIPO Case No. D2006-0211; HSBC Holdings Plc v. David H. Gold,WIPO Case No. D2001-0343; F. Hoffmann-La Roche AG v. Whois Defender, Inc.,WIPO Case No. D2006-0717. Further, the Panel subscribes to the principle that the test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone. See Wal-Mart Stores, Inc. v. Traffic Yoon, WIPO Case No. D2006-0812. Addition of the gTLD “.com” in this case is without legal significance. Therefore, for purposes of trademark use, “.com” is a generic term with no significance relative to the identification of the source of a good or service per se.
For all the above cited reasons, the Panel concludes that the disputed domain name is identical or confusingly similar to the Complainant’s trademarks, and therefore the condition of paragraph 4(a)(i) of the Policy is fulfilled. B. Rights or Legitimate Interests
The Panel accepts the arguments of the Complainant that the Respondent does not have any rights or legitimate interests in respect of the disputed domain name and that none of the circumstances mentioned in Policy, paragraph 4(c) are met here. The Respondent has not obtained the Complainant’s permission or consent to use the PORSCHE trademarks and it is not a licensee of the Complainant nor is the Respondent otherwise authorized by the Complainant to use these trademarks. The Respondent is not authorized to apply for or to use any domain name incorporating the Complainant’s trademarks. Moreover, there is not and has never been a business relationship between the parties. The Respondent is not commonly known by the disputed domain name. And finally, the Respondent is not making noncommercial use of the domain name, rather it redirects to the website of a provider of web services.
Thus, the Panel finds that Respondent’s use of the disputed domain name to redirect traffic through links to unrelated third-party websites cannot be considered a fair use of the disputed domain name. The use of a domain name to point to other sites to collect referral fees cannot be considered a bona fide offering of goods or services for a non-commercial or fair use. PRL USA Holdings Inc. v. LucasCobb,WIPO Case No. D2006-0162, citing Fresh Intellectual Properties, Inc. v. Matt Braska,WIPO Case No. D2005-0096.
Furthermore, it is obvious that the Respondent uses the disputed domain name for commercial gain and with the purpose of capitalizing on the fame of the Complainant’s trademarks and company name. There is a consensus view by previous UDRP panels that such use cannot be considered a bona fide offering of goods or services, or a noncommercial or fair use in circumstances as the ones that are present in this case Bridgestone Corporation v. Horoshiy, Inc., WIPO Case No. D2004-0795; Deutsche Telekom AG v. Dong Wang,WIPO Case No. D2005-0819. The Panel finds that the above facts demonstrate that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
For the above cited reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the requirements of paragraph 4(a)(ii) of the Policy are therefore fulfilled. C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) sets out certain circumstances which, in particular but without limitation, are to be construed as evidence of both. These include, inter alia, paragraphs 4(b)(ii), (iii) and (iv):
(ii) the Respondent has registered the disputed 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) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of his website or of a product or service on that website or location.
The Panel accepts the arguments of the Complainant that the Respondent has no rights or legitimate interests in registering and using disputed domain name, which so closely resembles a well-known and prestigious trade name and trademarks of the Complainant. An intention to sell the disputed domain name is indicated by Respondent’s reaction to the demands of the Complainant to transfer the disputed domain name. Prior to the institution of these Policy proceedings the Respondent did not claim to have a defendable legal position but responded to the Complainant’s demand for transfer by asking for a price that exceeds by far the registration costs of the disputed domain name. The Panel finds that the Respondent must have known that it would never get permission to use a domain name that clearly indicates a website operated by the Complainant itself, in particular not in connection with services of the “Porsche Travel Club”, therefore the only explanation in the Panel’s view as to why the Respondent registered the contested domain name is that it was waiting for the highest bidder to sell it.
The Panel finds that there is no doubt that the Respondent registered the disputed domain name primarily for the purpose of selling it, which would demonstrate that the registration and use of the disputed domain name was in bad faith, with the intent to sell it to the Complainant or its competitors. See VENTURUM GmbH v. Coventry Investments Ltd., DomainCollection Inc.,WIPO Case No. D2003-0405.
The Panel finds that the Respondent has, by registration of the disputed domain name, intentionally attempted to attract, for commercial gain, Internet users to his website or other online location, by creating a likelihood of confusion with the Complainant’s trademarks.
For the above cited reasons the Panel finds that the disputed domain name was registered and used in bad faith.
Considering all the facts and evidence, the Panel therefore finds that the requirements of paragraph 4(a)(iii) of the Policy are fulfilled in this case. 7. Decision
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 be transferred to the Complainant.
Ladislav Jakl
Sole Panelist
Dated: December 6, 2011
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