The Complainant is Dr. lng. h.c. F. Porsche AG of Stuttgart, Germany, represented by Lichtenstein, Körner & Partners, Germany.
The Respondents are PrivacyP of Queensland, Australia; and Nikolay Belomelski of Vratza, Bulgaria. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with L Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 31, 2013, naming PrivacyP as sole Respondent. On May 31, 2013, the Center transmitted by email to L Inc. a request for registrar verification in connection with the Domain Name. On June 4, 2013, L Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 7, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 7, 2013 adding Nikolay Belomelski as the second Respondent.
The Center verified that the Complaint together with the amended 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 Respondents of the Complaint, and the proceedings commenced on June 10, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 30, 2013. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on July 1, 2013.
The Center appointed Alan L. Limbury as the sole panelist in this matter on July 8, 2013. 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.
The language of the proceeding is English, being the language of the Registration Agreement. 4. Factual Background
The Complainant has been a maker of sports cars for more than 70 years. The name Porsche is famous. The Complainant is the proprietor of numerous PORSCHE trademark registrations, including German registration No. 643195, dated August 26, 1953 and International registration No. 562572, dated October 27, 1990.
Porsche cars are equipped with a navigation, information and entertainment software system called “Porsche Communication Management (PCM)”.
The Domain Name was registered on January 16, 2013. Until it was recently directed to a maintenance page following a request to the web host by the Complainant, the Domain Name resolved to a website which appeared to be operated by the Complainant and which offered what appeared to be the Complainant’s PCM products. 5. Parties’ Contentions A. Complainant
The Complainant says the First Respondent is an identity cloaking service which helps customers evade legal responsibility for wrongdoings and IP rights infringements committed on the website to which the Domain Name redirects. The First Respondent withdrew from the WhoIs records and replaced itself by the Second Respondent after notice of the Complaint. Sadly, such replacements are common practice of registrars conspiring with their cybersquatter customers to impede the enforcement of trademark rights and to undermine both the WhoIs and the UDRP system.
Relying on the consensus view of panels according to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) paragraph 4.9 (Who is the proper respondent in a case involving a privacy or proxy registration service?) the Complainant chooses to add the now disclosed registrant as a co-Respondent to the Complaint.
It is unlikely that the Second Respondent’s name and contact dates are accurate. In 2008 the same registrant registered the domain name , which he used for a phony news website on BMW cars while his true intention had been to earn revenues by advertising. This shows impressively a history of false names and contact details and infringement of trademark rights. In the same vein, the Second Respondent, whatever his real name may be, infringes the trademark rights of the Complainant.
From the beginning the Domain Name has been used for an online shop that mocks a website operated by the Complainant and where counterfeit copies of PCM software are offered for sale.
In order to prevent cyberflight, the Complainant did not contact the First Respondent. The Complainant asked the host-provider responsible for the website to take the website down, and currently the website redirects to a “Maintenance Mode” page. It is obvious that the Second Respondent is responsible for the use of the Domain Name for the distribution of counterfeit copies of the Complainant’s software products.
The Domain Name is confusingly similar to the Complainant’s PORSCHE trademark. The Respondents have no rights or legitimate interests in the Domain Name, which was registered and is being used in bad faith.
As to rights or legitimate interests, none of the circumstances set out in the Policy, paragraph 4(c) are present. Even if the goods offered at the website were genuine, the requirements set out in Oki Data Americas Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 are not fulfilled.
As to bad faith, the Policy, paragraph 4(b)(iv) applies because the Respondents attract users to the website by creating the impression of an official website operated or authorized by the Complainant.
The lack of rights or legitimate interests and the bad faith element with regard to the First Respondent are confirmed by the fact that the First Respondent registered the Domain Name in a cover up and attempted to escape jurisdiction by changing names and transferring the Domain Name to a new registrant pending a UDRP complaint. In addition to that, the Second Respondent’s activities confirm both his lack of rights or legitimate interests and his bad faith. B. Respondents
The Respondents did not reply to the Complainant’s contentions. 6. Discussion and Findings Procedural Issue: Who is the correct Respondent?
When the Policy was introduced in 1999, there were no privacy or proxy services. Some early UDRP decisions took the clear and unequivocal position that there is no place for beneficial ownership under the Policy. University of Maryland University College v. Nucom Domain Brokers & Urban Music Underground Club,WIPO Case No. D2002-0081, Gloria-Werke H. Schulte-Frankenfeld GmbH & Co. v. Internet Development Corporation and Gloria MacKenzie,WIPO Case No. D2002-0056 and Rug Doctor L.P. v. Barry Bourdage,WIPO Case No. DTV2003-0002. Further, since paragraph 8(a) of the Policy prohibits a “transfer” of a domain name registration during a pending proceeding, i.e. a proceeding that has been initiated by the filing of a complaint, changes to the name of the registrant after the filing of the complaint had been treated by certain panels as “cyberflying”. Dr. Ing. h.c. F. Porsche AG v. Domains by Proxy, Inc. and Vladimir Putinov,WIPO Case No. D2004-0311 and the cased there cited.
The practice of providers in seeking from registrars confirmation of the identity of the registrant is not explicitly required under the Policy, the Rules or the Supplemental Rules but is necessary, having regard to the responsibility of providers, under paragraph 4(a) of the Rules, to review the Complaint for administrative compliance with the Policy and the Rules before forwarding it to the Respondent, as well as confirming the language of the registration agreement and obtaining the contact details of the billing contact, which are almost always publicly unavailable. The practice of registrars in permitting or themselves effecting changes to the WhoIs registration information after receiving a copy of the Complaint at the time of its filing and purporting to “verify” that information, rather than the information as at the time of the filing of the Complaint, is also not explicit within the language of the Policy, the Rules or the Supplemental Rules, as they currently exist.
With the introduction of proxy services and in the absence of any amendment to the Policy, the Rules or the Supplemental Rules, the concept of “beneficial,” “underlying,” or “true” ownership has been somewhat hesitantly recognized, as has the potential for abuse by cybersquatters: see WWF-World Wide Fund for Nature aka WWF International v. Moniker Online Services LLC and Gregory Ricks,WIPO Case No. D2006-0975 and the thorough analysis in iFranchise Group v. Bean / MDNH, Inc. / Moniker Privacy Servs. [23658],WIPO Case No. D2007-1438. For a discussion of some of the problems arising from the registration of domain names in the name of a proxy service and the subsequent “revelation” of the “underlying registrant” see Jay Leno v. St. Kitts Registry, Domain Names Administration,WIPO Case No. D2009-0571.
Paragraph 1 of the Rules defines the Respondent as “the holder of a domain-name registration against which a complaint is initiated.” Paragraph 3(b)(v) of the Rules requires a complainant to “provide the name of the Respondent (domain name holder)” and all contact information known to the complainant, in sufficient detail to allow the Provider to fulfill its responsibility under paragraph 2(a) of the Rules to employ reasonably available means calculated to achieve actual notice to Respondent of the complaint.” At the time of the filing of the present Complaint on May 31, 2013, the Domain Name was registered in the name of PrivacyP, as shown in the Registrar’s WhoIs registration information. Complaint Annex 1. By naming PrivacyP as sole Respondent, the Complaint complied with the Rules, paragraph 3(b)(v). Mrs. Eva Padberg v. Eurobox Ltd.,WIPO Case No. D2007-1886. Accordingly, as recognized in the WIPO Overview 2.0, paragraph 4.9, the Complaint was not administratively deficient and did not require amendment in order for it to be forwarded to the Respondent by the Provider and considered by the Panel.
In conformity with the Supplemental Rules paragraph 4(c), the Complainant transmitted a copy of the Complaint to the Registrar at the same time as the Complaint was sent to the Center. The Complainant so certified in paragraph 18 of its Complaint. The WhoIs registration information was subsequently changed to name Nikolay Belomelski as registrant of the Domain Name. This is the information that the Registrar “verified.” It did not verify the WhoIs registration information as at the time of the filing of the Complaint.
Unlike many proxy cases in which, upon being informed of the change in registrant details following the filing of the complaint, the complainant amends the complaint so as to name the “true owner” as sole or joint respondent without raising any objection, such as in F. Hoffmann-La Roche AG v. PrivacyP, Contact Id 1328832, Alexey Dronin,WIPO Case No. D2008-0417, the Complainant here has amended its Complaint to add Nikolay Belomelski as the Second Respondent, while asserting bad faith and absence of rights or legitimate interests against both the privacy service and the “true owner” as the Respondents.
The Panel finds it appropriate that PrivacyP be named as a Respondent in this case since it was the registrant named in the WhoIs registration information in relation to the Domain Name when the Complaint was filed. The Panel also finds that the change of registrant information in the Registrar’s WhoIs database after the initiation of the Complaint allows this Panel to find Nikolay Belomelski as a Respondent. In order to ensure the enforceability of any order for transfer or cancellation which the Panel might make, it is appropriate that Nikolay Belomelski also be named as a Respondent in this case. Substantive issues
Under paragraph 4(a) of the Policy, the Complainant has the burden of proof in respect of the following three elements:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondents have 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 respondent is not obliged to participate in a proceeding under the Policy but if it fails to do so, asserted facts may be taken as true and reasonable inferences may be drawn from the information provided by the complainant. See Reuters Limited v. Global Net 2000, Inc,WIPO Case No. D2000-0441. See also Microsoft Corporation v. Freak Films Oy,WIPO Case No. D2003-0109; SSL INTERNATIONAL PLC v. MARK FREEMAN,WIPO Case No. D2000-1080 and ALTAVISTA COMPANY v. GRANDTOTAL FINANCES LIMITED et. al.,WIPO Case No. D2000-0848. A. Identical or Confusingly Similar
The Complainant clearly has rights in the famous trademark PORSCHE.
The Domain Name incorporates the Complainant’s trademark in its entirety. The addition of “pcm” does nothing to distinguish the Domain Name from the Complainant’s trademark.
The specific top level of the Domain Name “.com” is irrelevant for the purpose of determining whether the Domain Name is identical or confusingly similar: Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429.
The Panel finds that the Domain Name is confusingly similar to the Complainant’s PORSCHE trademark.
The Complainant has established this element of its case. B. Rights or Legitimate Interests
The Panel finds that the PORSCHE mark is distinctive and well known. The Complainant’s assertions are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in the Domain Name on the part of the Respondents. The burden of production therefore shifts to the Respondents to show by concrete evidence that one or other of them has rights or legitimate interests in the Domain Name: Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 and the cases there cited. The Respondents have made no attempt to do so.
Accordingly, the Panel finds that neither of the Respondents has any rights or legitimate interests in the Domain Name.
The Complainant has established this element of its case. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy. As against the First Respondent, the Complainant asserts cyberflying. As against the Second Respondent, the Complainant relies on paragraph 4(b)(iv) of the Policy, i.e.
(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 its website or location.
Having regard to the Complainant’s uncontradicted assertions, the Panel finds that the Domain Name was registered and is being used intentionally to attract, for commercial gain, Internet users to the Second Respondent’s website by creating a likelihood of confusion with the Complainant’s PORSCHE mark as to the source, sponsorship, affiliation or endorsement of the website.
Although proxy registration is not necessarily a sign of illegitimate purpose, Fifth Third Bancorp v. Secure Whois Information Service,WIPO Case No. D2006-0696, proxy services have nevertheless been found in some cases to have acted in bad faith. Dr. Ing. h.c. F. Porsche AG v. Domains by Proxy, Inc. and Vladimir Putinov,WIPO Case No. D2004-0311, Baylor University v. Domains by Proxy, Inc., a/k/a Mark Felton a/k/a Thomas Bassett a/k/a William Bunn a/k/a Fertility Specialists of Dallas a/k/a Becky Chatham a/k/a Amanda Scott a/k/a Nathan Flaga a/k/a Lisa Payne a/k/a Victor Weir III., NAF Claim No. 1145651.
The Panel considers that, under the Policy, which treats the privacy service as the registrant, the privacy service cannot simply turn a blind eye to impropriety but has a responsibility to decline to register a domain name for a customer seeking its services in relation to a domain name which is identical or confusingly similar to a trademark which the privacy service must know belongs to another, unless the customer can demonstrate to the privacy service that it has rights or legitimate interests in the domain name and is not acting in bad faith.
Here it is inconceivable that the First Respondent was unaware of the Complainant’s famous PORSCHE trademark when it agreed with the Second Respondent, a person having no apparent relationship to or authority from the Complainant, to register the Domain Name in its own name. The First Respondent has not shown that it made any attempt to satisfy itself of the legitimacy and good faith of the Second Respondent. As registrant, the First Respondent must take responsibility for having allowed the Second Respondent to use the Domain Name to mimic a website of the Complainant. The Panel finds that the First Respondent registered the Domain Name in bad faith and, by allowing it to be used to mimic a website of the Complainant, has used the Domain Name in bad faith.
Accordingly the Panel finds, as against both Respondents, that the Domain Name was registered and is being used in bad faith.
The Complainant has established this element of its case. 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 Domain Name be transferred to the Complainant.
Alan L. Limbury
Sole Panelist
Date: July 20, 2013
Full & Egal Universal Law Academy