The Complainant is Dr. Ing. h.c. F. Porsche AG of Stuttgart, Germany, represented by Lichtenstein, Körner & Partners, Germany.
The Respondent is Takashi Yamaguchi of Tokyo, Japan; Domain ID Shield Service CO., Limited of Hong Kong, China. 2. The Domain Names and Registrar
The disputed domain names and are 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 January 17, 2014. On January 20, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 21, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 21, 2014 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 amendment to the Complaint on January 23, 2014.
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 January 27, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was February 16, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 17, 2014.
The Center appointed Manoel J. Pereira dos Santos as the sole panelist in this matter on February 25, 2014. 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 trademarks upon which the Complaint is based are PORSCHE, 918 SPYDER and SPYDER. According to the documentary evidence and contentions submitted, the Complainant owns a number of trademark registrations for the PORSCHE trademark around the world, including the International Registration Trademark No. 562572, registered on October 27, 1990, protected in China; International Registration Trademark No. 639048, registered on March 13, 1995, also protected in China; International Registration Trademark No. 640976, registered on July 13, 1995, also protected in China; and International Registration Trademark No. 657048, registered on January 27, 1996, also protected in China; as well as the United States of America Trademark registrations No. 0618933, dated January 10, 1956; No. 2134692, dated February 3, 1998; No. 2200107, dated October 27, 1998; No. 1431901, dated March 10, 1987; No. 1315679, dated January 22, 1985; No. 1279014, dated May 22, 1984; No. 1280748, dated June 5, 1984; No. 1315853, dated January 22, 1985; No. 1503994, dated September 13, 1988; No. 1370326, dated November 12, 1985.
The Complainant also owns a number of trademark registrations for the 918 SPYDER and SPYDER trademarks around the world, including the International Registrations No. 1051337, dated August 6, 2010; and No. 1055649, dated August 9, 2010 (both 918 SPYDER); as well as No. 884203, dated January 20, 2006 (SPYDER).
According to the documentary evidence and contentions submitted, the Complainant is a maker of sports cars for more than 70 years, utilizing PORSCHE as the distinctive part of its trade name and as a trademark to distinguish the cars it produces. In 2012, the Complainant introduced the Porsche 918 Spyder hybrid model which has become known as one of the Complainant’s prestigious cars.
According to the documentary evidence and contentions submitted, the disputed domain name was registered on April 6, 2013 and the disputed domain name was registered on April 5, 2013. 5. Parties’ Contentions A. Complainant
The Complainant argues that the disputed domain names are confusingly similar to the Complainant’s trademarks because the trademarks PORSCHE and 918 SPYDER are embodied fully and identically in the disputed domain names.
The Complainant further contends that the Respondent does not have rights or legitimate interests regarding the disputed domain names because (i) neither is there a use nor are there any preparations to use the disputed domain names with a bona fide offering of goods or services; (ii) there is not and there has never been a business relationship between the parties; (iii) the Respondent is not commonly known by the disputed domain names; and (iv) the Respondent is not making a noncommercial use of the disputed domain names.
Finally, the Complainant contends that the Respondent registered and used the disputed domain names in bad faith because (i) the state of passive holding does not prevent the finding of bad faith; (ii) the Respondent intentionally conceals the identity of the domain name holder, acting in a conspiracy against the very purpose of the WhoIs system and the UDRP; (iii) the Respondent has registered two disputed domain names that clearly embody famous and prestigious trademarks for other no reason than to benefit from the value of such trademarks; and (iv) the failure to make any legitimate use of the disputed domain names for more than nine months also indicates that the Respondent and its customer are acting in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Respondent’s standing
When the Complaint was filed, the registrant of the disputed domain names was recorded as Domain ID Shield Service CO., Limited which is a privacy/proxy service to enable “real” registrants of domain names to conceal their identities. However, in its response, the Registrar advised that the registrant of the disputed domain names is Takashi Yamaguchi.
Both the privacy/proxy service and the actual registrant have been served with copies of the Complaint and neither has responded. The Panel will not distinguish between the two. The practice of having more than one respondent to a proceeding under the Policy where one is a privacy/proxy service and the other is the beneficial party which was later disclosed by the registrar is well-recognized in UDRP cases. See Microsoft Corporation v. Whois Privacy Protection Service / Lee Xongwei,WIPO Case No. D2005-0642. B. Effect of the Default
The consensus view is that the respondent’s default does not automatically result in a decision in favor of the complainant and that the complainant must establish each of the three elements required by paragraph 4(a) of the Policy (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.6). However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
The Panel finds that there are no exceptional circumstances for the failure of the Respondent to submit a Response. As a result, the Panel infers that the Respondent does not deny the facts asserted and contentions made by the Complainant from these facts. Reuters Limited v. Global Net 2000, Inc.,WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084; Ross-Simons, Inc. v. Domain.Contac, WIPO Case No. D2003-0994. Therefore, asserted facts that are not unreasonable will be taken as true and the Respondent will be subject to the inferences that flow naturally from the information provided by the Complainant. Reuters Limited v. Global Net 2000, Inc., supra; RX America, LLC v. Matthew Smith,WIPO Case No. D2005-0540.
The Panel will now review each of the three cumulative elements set forth in paragraph 4(a) of the Policy to determine whether the Complainant has complied with such requirements. C. Identical or Confusingly Similar
The disputed domain name incorporates the PORSCHE and SPYDER trademarks in their entirety. The disputed domain name incorporates the SPYDER and 918 SPYDER trademarks in their entirety.
Previous UDRP panels have held that when a domain name wholly incorporates a complainant’s registered trademark that may be sufficient to establish confusing similarity for purposes of the Policy. See, e.g., TELSTRA CORPORATION LIMITED v. BARRY CHENG KWOK CHU,WIPO Case No. D2000-0423; Pfizer Inc. v. United Pharmacy Ltd,WIPO Case No. D2001-0446; E.I. du Pont de Nemours and Company v. Richi Industry S. r. l.,WIPO Case No. D2001-1206; Utensilerie Associate S.p.A. v. C & M,WIPO Case No. D2003-0159; Shaw Industries Group Inc., Columbia Insurance Company v. Wan-Fu China, Ltd.,WIPO Case No. D2007-0282. That is particularly true where the disputed domain names incorporate well-known trademarks as PORSCHE, SPYDER and 918 SPYDER.
Also, the addition of the suffix “.com” is non-distinctive because it is required for the registration of the domain name. 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; RX America, LLC v. Mattew Smith, supra.
Therefore, the Panel finds that the disputed domain names and are clearly confusingly similar to the Complainant’s trademarks and, as a result, finds that the requirement of paragraph 4(a)(i) of the Policy is met. D. Rights or Legitimate Interests
The consensus view in WIPO URDP Panel decisions has been that a complainant is required to make out an initial prima facie case. Once such prima facie case has been established, a respondent then carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (WIPO Overview 2.0, paragraph 2.1).
In the instant case, the Complainant has done enough to establish a prima facie case. In fact, the Panel finds reasonable the Complainant’s contentions that (i) there is not and there has never been a business relationship between the parties; (ii) the Respondent may not claim any rights established by common usage corresponding to the disputed domain names; and (iii) the Respondent is not making a noncommercial use of the disputed domain names.
The Panel finds that in this case the Respondent is not making use of a generic value of the disputed domain names. Instead, all circumstances point strongly to the Respondent having chosen the disputed domain names because of their value as a close approximation of the Complainant’s trademarks. In fact, the Panel finds that the disputed domain names were selected and used by the Respondent to take advantage of the notoriety associated with the PORSCHE, SPYDER and 918 SPYDER trademarks and the goodwill attached thereto, most likely with the intent to attract for commercial gain Internet users. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “M”,WIPO Case No. D2000-0847.
In light of the foregoing, the Panel finds that the requirement of Paragraph 4(a)(ii) of the Policy is met. E. Registered and Used in Bad Faith
In light of the reputation of the PORSCHE, SPYDER and 918 SPYDER trademarks, the reproduction by the Respondent of the Complainant’s trademarks shows that the Respondent in all likelihood knew of the existence of the Complainant’s trademarks and of their notoriety worldwide and intended to benefit from the value of such trademarks.
The Panel concurs with previous WIPO UDRP decisions holding that registration of a well-known trademark as a domain name may be an indication of bad faith. See Pepsico, Inc. v. Zhavoronkov,WIPO Case No. D2002-0562; Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; Pepsico, Inc. v. Domain Admin,WIPO Case No. D2006-0435. As decided before, “knowledge of a corresponding mark at the time of registration of the domain name suggests bad faith”. Caixa D´Estalvis i Pensions de Barcelona (“La Caixa”) v. Eric Adam,WIPO Case No. D2006-0464; Reuters Limited v. Global Net 2000, Inc., supra.
In addition, the Complainant alleges that the state of passive holding does not prevent the finding of bad faith, relying on previous WIPO UDRP decisions.
The consensus view in WIPO URDP panel decisions has been that “[t]he lack of active use of the domain name does not as such prevent a finding of bad faith”, and that a panel must examine such circumstances as “complainant having a well-known trademark, no response to the complaint, concealment of identity and the impossibility of conceiving a good faith use of the domain name”. (WIPO Overview 2.0, paragraph 3.2). See Telstra Corporation Limited v. Nuclear Marshmallos,WIPO Case No. D2000-0003; Parfums Christian Dior v. 1 Netpower, Inc.,WIPO Case No. D2000-0022; J. García Carrión, S.A. v. Mª José Catalán Frias,WIPO Case No. D2000-0239; Bayer Aktiengesellschaft v. H. Monssen, WIPO Case No. D2003-0275; Teachers Insurance and Annuity Association of America v. Wreaks Communications Group,WIPO Case No. D2006-0483; MasterCard International Incorporated v. North Tustin Dental Associates, WIPO Case No. D2007-1412.
The Panel is of the opinion that, under appropriate circumstances, passive holding evidences bad faith use. In the instant case the majority of the facts referred to above are present: the Complainant owns well-known trademarks, the Respondent used a proxy service to conceal its identity and there is no indication in the records of a possible good faith use of the disputed domain names.
In short, the manner in which the Respondent has used and is using the disputed domain names demonstrates that the disputed domain names were registered and have been used in bad faith.
In light of all the conclusions and findings above, the Panel finds that the requirement of paragraph 4(a)(iii) of the Policy is met. 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 names and be transferred to the Complainant.
Manoel J. Pereira dos Santos
Sole Panelist
Date: March 10, 2014
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