Complainant is Dr. Ing. h.c. F. Porsche AG of Stuttgart, Germany, represented by Lichtenstein, Körner & Partners, Germany.
Respondent is bian mu of Zhaoyuan, Shandong, China. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 30, 2013. On July 30, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 30, 2013, the Registrar transmitted by email to the Center its verification response, disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on August 2, 2013 providing the registrant and contact information disclosed by the Registrar, and requesting Complainant to submit an amendment to the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an Amended Complaint on August 2, 2013.
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 Respondent of the Complaint, and the proceedings commenced on August 7, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 27, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 28, 2013.
The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on September 3, 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. 4. Factual Background
Complainant is a famous car manufacturing company from Austria, which specializes in sports’ cars.
Complainant licensed its trademark PORSCHE DESIGN to Porsche Design Management GmbH & Co KG, a company owned and operated by Complainant, which designs and produces products, such as watches, luggage, briefcases, glasses, as well as other accessories (Annex 2 of the Complaint). After a partnership between Complainant and Adidas Corporation, this company started producing and selling sneakers (Annex 3 of the Complaint).
Complainant owns several trademark registrations bearing the word “Porsche” worldwide, including a few in China, where Respondent seems to be located (Annexes 4 - 23 of the Complaint). For example:
- Chinese Trademark Registration no. 562572, for PORSCHE, granted on October 27, 1990;
- Chinese Trademark Registration no. 456717, for PORSCHE DESIGN, granted on July 29, 1980;
- US Trademark Registration no. 0618933, for PORSCHE, granted on January 10, 1956;
- European Trademark Registration no. 000073098 for PORSCHE, granted on December 12, 2000.
The disputed domain name was registered by Respondent on May 24, 2013. 5. Parties’ Contentions A. Complainant
Complainant alleges that it is a leading company in the sports’ cars manufacturing segment, and that its trademarks and domain names are well known throughout the world, enjoying a reputation for high quality and excellent performance. It states that it has been utilizing the word “Porsche” as the prominent and distinctive part in its trade name for over 70 years.
Complainant states Respondent is located in China and that there is no detailed information in the WhoIs database that could be traced back to a specific individual or business entity. Complainant argues that the disputed domain name resolves to a page where counterfeit sneakers and merchandise are being sold.
Complainant claims that two other domain names and were redirecting to the same website until they were transferred to Complainant as a result of previous UDRP decision (Dr. Ing. h.c. F. Porsche AG v. Robert,WIPO Case No. D2012-2036 and Dr. Ing. h.c. F. Porsche AG v. Patricio Quezada,WIPO Case No. D2013-0557), and, therefore, it is obvious that Respondent does not exist as an individual and that this website is part of a scheme created and maintained by organized Chinese criminals.
Complainant sustains that the look of the website related to the disputed domain name is an imitation of what an original website of Complainant’s licensee – Porsche Design Group – could look like. It also affirms that the licensee’s company name is reflected in the website’s logo.
Complainant argues that Respondent created a website similar to its licensee to defraud customers who believe they are in fact dealing with Complainant’s company. Even the “conditions of use” have been copied from Complainant’s original store’s website.
Complainant states that it sees no benefit in trying to contact Respondent before filing the Complaint, because, even if a domain name is transferred as result of an administrative proceeding, Respondent registers new and similar domain names to relocate their website.
Complainant further claims that the disputed domain name is confusingly similar to its trademarks and company name “Porsche” and “Porsche Design”, adding only the word “shoe”, and that Respondent has no rights or legitimate interests in the disputed domain name since it is not commonly known as “Porsche” or “Porsche Design”.
Complainant also alleges that Respondent is not making any commercial use of the disputed domain name, but only redirecting to a website bearing counterfeit products. It also claims that Respondent has registered and is using the disputed domain name in bad-faith since it is benefitting from misleading the public in order to sell counterfeit sneakers. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
In order to succeed in a UDRP proceeding, Complainant must prove each of the following requirements specified under paragraph 4(a) of the Policy:
(i) that the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in respect of which Complainant has rights; and
(ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
These three elements are considered hereinafter.
In view of Respondent’s failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences as it considers appropriate pursuant to paragraph 14(b) of the Rules. A. Identical or Confusingly Similar
Complainant has duly proved the first element under paragraph 4(a) of the Policy by attesting that it is the owner of several trademark registrations with the word “Porsche”, including “Porsche Design”, worldwide and that such trademark is entirely incorporated in the disputed domain name .
The Panel also understands that trademark PORSCHE is a well-known trademark.
The Panel therefore finds that the disputed domain name is confusingly similar to Complainant’s trademarks PORSCHE and PORSCHE DESIGN. B. Rights or Legitimate Interests
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized at paragraph 2.1 of the WIPO Overview of WIPO Panel Views on UDRP Questions, Second Edition (“WIPO Overview, 2.0”) as follows: “[A] complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If Respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP [...] If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on Complainant.”
In this case, Complainant has provided sufficient prima facie evidence of “no rights or legitimate interests”, so the burden of production shifts to Respondent. As Respondent has not filed any response, that burden has not been discharged, and the Panel has considered Complainant’s prima facie proof to be sufficient evidence to demonstrate that Respondent has no rights or legitimate interests in the disputed domain name .
The Panel recognizes that Respondent is not commonly known as “Porsche” or “Porsche Design” and does not own any trademark bearing the word “Porsche”, and since Respondent has not chosen to present any argument in this matter or attempted to prove any right, it is apparent that the its only intention when registering the disputed domain name was to attract for commercial gain Internet users to its website, by creating a false association with Complainant’s well known trademark.
In view of the above, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances include: “(iv) by using the disputed domain name, Respondent having intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line 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 finds it is highly unlikely that Respondent would not have known of Complainant’s company and rights in the trademark PORSCHE at the time of registration of the disputed domain name, considering its fame and well-known status worldwide.
However, the Panel could not verify Complainant’s claim that the disputed domain name resolved to a website where counterfeit products were being sold, because when accessing the disputed domain name’s website, the page appeared to be out of order.
The Panel additionally notes that “passive holding” may in certain circumstances constitute further evidence of bad faith use, especially when Complainant has a well-known trademark, no response to the complaint was received and when Respondent was involved in previous UDRP decisions.
Despite the fact that the website appears to be out of order, the Panel believes paragraph 4(b)(iv) states clearly what has occurred in this dispute, and agrees with Complainant that Respondent is using the disputed domain name to intentionally attempt to attract Internet users to the website, by creating a likelihood of confusion with Complainant’s trademarks, and cannot see in this case any good faith of Respondent when registering the disputed domain name.
Accordingly, the Panel concludes that the disputed domain name was registered and is being used in bad faith. 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 Complainant.
Gabriel F. Leonardos
Sole Panelist
Date: September 12, 2013
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