The Complainant is Dr. Ing. h.c. F. Porsche AG of Stuttgart, Germany, represented by Lichtenstein, Körner & Partners, Germany.
The Respondent is Zhao Ke of China. 2. The Domain Name and Registrar
The disputed domain name is registered with Hangzhou E-Business Services Co., Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 3, 2011. On November 3, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 9, 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. On November 9, 2011, the Center transmitted an email communication to the parties in both Chinese and English regarding the language of the proceedings. On the same day, the Complainant confirmed its request that English be the language of the proceedings. On November 10, 2011, the Respondent requested that Chinese is the language of the proceedings.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 11, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 1, 2011. The Respondent did not submit any formal response. Accordingly, the Center notified the parties regarding the procedure update on December 2, 2011.
The Center appointed Dr. Colin Yee Cheng Ong as the sole panelist in this matter on December 14, 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. 4. Factual Background
The Complainant has asserted that it has been in the business of making sports cars for mom than 70 years utilizing the name “Porsche” as the prominent and distinctive part in its trade name. The Complainant has provided evidence to show that it is the owner of a number of registered rights in the trademark PORSCHE and that its trademark and trade name "Porsche" are known throughout the world and enjoy a reputation for high quality and excellent performance. The Complainant has asserted that the “Porsche” name is protected by trademark registrations in almost every country worldwide and has specifically provided evidence of many trademark registrations in China, where the Respondent is based. 5. Parties’ Contentions A. Complainant
5.1 The Complainant has not informed the Center when it had discovered the disputed domain name and when the disputed domain name was registered. The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark in which it holds rights for the reason that the disputed domain name is highly similar to the Complainant’s PORSCHE trademark with the mere adjunction of term “se” which is the ISO code for Sweden indicating a website operated by the Complainant that is addressed to the Swedish audience. The Panel notes that there have not been any other reasons provided by the Complainant. There is also no reliance on previous WIPO UDRP decisions. The Complainant contends that the disputed domain name registered by the Respondent is identical or confusingly similar to the PORSCHE trademark in which it holds rights of the registered trademark. The Complainant has annexed a large number of examples of PORSCHE trademark that have been registered in China and in several major trading countries.
5.2 The Complainant contends that the Respondent has no legitimate rights and interests in the disputed domain name for the following reasons:
(i) There is neither use nor any preparations to use the disputed domain name with any bona fide offering of goods or services;
(ii) There is no business relationship between the parties;
(iii) The Respondent is not commonly known by the disputed domain name;
(iv) The Respondent is not making any commercial use of the disputed domain name, but simply redirects Internet traffic to a parking website to offer the disputed domain name for sale.
5.3 The Complainant, lastly, contends that the disputed domain name was registered and is being used in bad faith for the following reasons:
(i) The Respondent frankly admits that it had registered the disputed domain name like many others primarily for the purpose of selling it to the Complainant for valuable consideration in excess of out of pocket costs directly related to the disputed domain name;
(ii) while offering the disputed domain name for sale, the Respondent earns pay-per-click commission by taking part in a parking websites scheme. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Complaint was filed in the English language. On November 9, 2011 the Center transmitted by email to the parties in both Chinese and English regarding the language of proceedings. Pursuant to Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. The Center has been informed by the Registrar that the language of the Registration Agreement for the disputed domain name is Chinese.
Although the Chinese language is the language of the Registration Agreement for the disputed domain name, on November 9, 2011 the Complainant asserted and confirmed its request that English should be the language of proceedings. On November 10, 2011, the Respondent requested that Chinese is the language of the proceedings.
According to paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the Panel decides otherwise. The spirit of paragraph 11 is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfort with each language, the expenses to be incurred and the possibility of delay in the proceeding in the event translations are required and other relevant factors.
The Panel wishes to make it clear that the inability of the Complainant to communicate in the Chinese language or its preference to communicate in English is not and cannot be a proper sole basis for not adopting the proper language of proceedings as set out in paragraph 11 of the Rules. However, the Panel views that it is very significant that there has been correspondence made by the Respondent to the Complainant in which the Respondent has in making its offer to sell the disputed domain name clearly demonstrated its proficiency of the English language
Therefore, in the present case, considering the composition of the disputed domain name and the Panel’s assessment of the unique circumstances of the case, bearing in mind its broad powers given to the Panel by paragraph 11 (a) of the Rules, the Panel hereby decides, under paragraph 11 of the Rules, that English shall be the language of administrative proceeding in this case. However, based on the Panel’s discretion, Chinese language documents submitted have also been reviewed by the Panel and added to the Respondent’s case.
The Panel finds that the proceedings have been conducted in accordance with the Rules and the Policy. Having gone through the series of communications as set out above under the section on procedural history, the Panel concludes that the Center has notified the Respondent of this proceeding and has discharged its responsibility under paragraph 2(a) of the Rules. Findings
6.1 The Panel has reviewed the Complaint together with its annexes and the Respondent communication, and in the light of this material, the Panel finds as set out below.
6.2 First, the Complainant must prove that:
(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. A. Identical or Confusingly Similar
6.3 Pursuant to paragraph 4(a)(i) of the Policy, a complainant must prove that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.
6.4 In line with such provision, the Complainant must prove two limbs, i.e. it enjoys the trademark right; and the disputed domain name is identical with or confusingly similar to its trademark or service mark. The test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the disputed domain name is used or other marketing and use factors, usually considered in trademark infringement (see, for example, Ebay Inc. v. Wangming, WIPO Case No. D2006-1107).
6.5 The Complainant has appended to the Complaint a long list of trademarks that incorporate the PORSCHE trademark. It is quite clear that the Complainant is the owner of a large number of trademarks in various jurisdictions including China that simply comprise the word “Porsche”. Given this, the Panel has little difficulty in concluding that the disputed domain name is confusing similar to a number of trademarks in which the Complainant has rights. The Panel agrees with the Complainant that the addition of the mere adjunction of term “se” is not a distinguishing feature and does not dispel a finding of confusing similarity.
6.6 In the circumstances, the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
6.7 At the heart of the Complaint is the Complainant’s contention that the Respondent has taken the name of the Complainant with a view to attracting Internet users to its website to offer the disputed domain name for sale where it has a passive use of the website. The Panel accepts that such activity does not provide the Respondent with a legitimate interest in the disputed domain name.
6.8 Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no right or legitimate interest in the disputed domain name. However, it is the prevailing consensus view among the panels that where a complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show one of the three circumstances under paragraph 4(c) of the Policy, then the respondent may lack a right or legitimate interest in the domain name.
6.9 As previously held by other UDRP panels, “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant”. (See eBay Inc. v. Akram Mehmood,WIPO Case No. DAE2007-0001).
6.10 Further, as another panel had held in the case of Owens Corning v. NA,WIPO Case No. D2007-1143, if a respondent wants to argue that it has a legitimate interest in a domain name on this basis, it is then for the respondent to positively advance that case and to bring forward evidence in support (see paragraph 6.21(ii) of that decision).
6.11 In addition, the Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the disputed domain name. There is no evidence on the record of this proceeding to suggest that the Respondent has been commonly known by the disputed domain name, or that the Respondent has made non-commercial or fair use of the name. The Respondent has also not used the disputed domain name in connection with a bona fide offering of goods or services. The Panel thus finds that the Complainant has made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name which is identical the Complainant’s mark.
6.12 Under these circumstances, the Panel takes the view that the Respondent has no rights or legitimate interests in the disputed domain name and that the requirement of paragraph 4(a)(ii) is also satisfied. C. Registered and Used in Bad Faith
6.13 The Panel accepts the Complainant’s contention that the Respondent registered the disputed domain name in the knowledge of the Complainant’s business and its use of the PORSCHE. This is inherently probable given the undisputed fame of the PORSCHE trademark worldwide and the composition and subsequent use of the disputed domain name.
6.14 The Respondent had in its letter to the Complainant frankly admitted that it had registered the disputed domain name like many others primarily for the purpose of selling it to the Complainant for valuable consideration in excess of out of pocket costs directly related to the disputed domain name. The Panel finds the conduct and language of the Respondent to be tantamount to blackmailing the Complainant. This is particularly so where the Respondent itself acknowledges that it would be very likely to lose and disputed domain name in a UDRP proceeding, but that it would take time for the Complainant to take the legitimate course of action. It is unfortunate that the Panel has no power to grant costs to the Complainant to be paid by the Respondent on a full indemnity basis. Given these findings, the Panel also infers and accepts the Complainant’s undisputed contention that the Respondent registered the disputed domain name with a view to diverting Internet users with an interest in Porsche to its website for its own commercial gain.
6.15 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy. This is sufficient to dispose of this matter in favour of the Complainant. However, the Panel would also add an additional point before drawing this decision to a close.
6.16 Finally, the use by the Respondent of the disputed domain name in connection with a domain parking service appears to provide yet further evidence of bad faith use in this case (see for example, Amanresorts Limited and Amanresorts International Pte Ltd v. Domain Admin c/o Dynadot Privacy, WIPO Case No. D2008-1973). 7. Decision
For all 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.
Dr. Colin Yee Cheng Ong
Sole Panelist
Dated: December 28, 2011
Full & Egal Universal Law Academy