The Complainant is Dr. Ing. h.c. F. Porsche AG of Stuttgart, Germany, represented by Lichtenstein, Körner & Partners, Germany.
The Respondent is Kenji Inoue of Asaka-shi, Saitama, Japan; Whois Privacy Protection Service of Tokyo, Japan. 2. The Domain Name and Registrar
The disputed domain name is registered with GMO Internet, Inc. d/b/a Discount‑D and O (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 3, 2014. On June 3, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 6, 2014, 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 the Complainant on June 6, 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 June 6, 2014.
On June 6, 2014, the Center transmitted an email to the parties in both English and Japanese regarding the language of the proceedings. On the same day, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not submit any comments within the specified due date.
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 June 13, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 3, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 4, 2014.
The Center appointed Ho-Hyun Nahm as the sole panelist in this matter on July 14, 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 Complainant has been a maker of sports cars for more than 70 years, utilizing “Porsche” as the prominent and distinctive part in its trade name. The Trademark and trade name PORSCHE are known throughout the world and enjoy a reputation for high quality and excellent performance. It also owns numerous registered trademarks consisting of or incorporating the word “Porsche” in Japan and many other countries. The Complainant, inter alia, owns following trademark registration in the United States of America (See Annex 12 to the Complaint):
Mark: PORSCHE
Registration number: 71668978
Class and goods: 12; automobiles and parts thereof
Filing date: June 28, 1954
Registration date: January 10, 1956
The disputed domain name was registered on November 9, 2011. 5. Parties’ Contentions A. Complainant
(i) The disputed domain name is confusingly similar to the Complainant’s registered trademark PORSCHE in which the Complainant has rights:
(a) The Complainant has been a maker of sports cars for more than 70 years, utilizing “Porsche” as the prominent and distinctive part in its trade name. It also contends that its trademark and trade name PORSCHE are known throughout the world and enjoy a reputation for high quality and excellent performance.
(b) It also owns numerous registered trademarks consisting of or incorporating the word “Porsche” in Japan and many other countries.
(c) The Complainant is the owner of the PORSCHE mark the registration of which predates the Respondent’s registration of the disputed domain name.
(d) The disputed domain name is confusingly similar to the Complainant’s registered trademark PORSCHE in which the Complainant has rights.
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name:
(a) Neither is there a use nor are there any preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
(b) There is no and has never been a business relationship between the parties.
(c) The Respondent is not commonly known by the disputed domain name.
(d) The Respondent has not made noncommercial use of the disputed domain name, rather it redirects to a shopping website offering orthopedic insoles made by a German company that is completely unrelated to the Complainant.
(iii) The disputed domain name was registered and is being used in bad faith by the Respondent:
(a) This is a case of paragraph 4(b)(iv) of the Policy because by using the disputed domain name the Respondent and its customer, who operates an online sales business or is in a business relationship with it, attempts to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website and of the product offered on the website. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Preliminary Issue: Language of the Proceedings
The Panel notes that the Registration Agreement is in Japanese, thereby making the language of the proceedings in Japanese. The Complainant requested that these proceedings be conducted in English. The Respondent did not submit any objection to the Complainant’s request. Pursuant to paragraph 11(a) of the Rules, the Panel, noting that the case-related communications have been made to the parties in both English and Japanese, and, absent an official Response from the Respondent, determines that the remainder of the proceedings shall be conducted in English.
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that a complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name registered by the respondent 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith.
In view of the Respondent’s failure to submit a response, the Panel decides this administrative proceeding on the basis of the Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draws such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009 (in the absence of a response, it is appropriate to accept as true all allegations of the Complaint). A. Identical or Confusingly Similar
The Complainant contends that it has been a maker of sports cars for more than 70 years, utilizing “Porsche” as the prominent and distinctive part in its trade name. It also contends that its trademark and trade name PORSCHE are known throughout the world and enjoy a reputation for high quality and excellent performance. It also owns numerous registered trademarks consisting of or incorporating the word “Porsche” in Japan and many other countries.
The Complainant has provided sufficient evidence showing that it is the owner of the PORSCHE mark the registration of which predates the Respondent’s registration of the disputed domain name. It, inter alia, owns the following trademark registration in the United States of America (See Annex 12 to Complaint):
Mark: PORSCHE
Registration number: 71668978
Class and goods: 12; automobiles and parts thereof
Filing date: June 28, 1954
Registration date: January 10, 1956
Accordingly, the Panel finds that the Complainant’s registrations of the PORSCHE mark with the United States Patent and Trademark office (“USPTO”) and in other countries sufficiently establish its rights in the mark pursuant to Policy, paragraph 4(a)(i). The Panel notes that the Respondent adds the geographical identifier “japan” to the Complainant’s PORSCHE mark in the disputed domain name. The Panel holds that the Respondent’s addition of a geographical identifier or addition of the hyphen does not distinguish the disputed domain name from the Complainant’s mark under Policy, paragraph 4(a)(i). See “Dr. Martens” International Trading GmbH, “Dr. Maertens” Marketing GmbH v. Koben Jorns, WIPO Case No. D2014-0813 (finding the Respondent’s addition of a geographical identifier or omission of the punctuation of the Complainant’s mark does not distinguish the disputed domain name from the Complainant’s mark under Policy, paragraph 4(a)(i)).
The Panel holds that the disputed domain name is confusingly similar to the Complainant’s mark PORSCHE especially in that it incorporates the Complainant’s mark in its entirety. See Hoffmann-La Roche Inc. v. Hightech Industries, Andrew Browne,WIPO Case No. D2010-0240 finding “the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark.”
The Panel also finds that the “.com” is a generic Top-Level Domain (“gTLD”), and thus does not constitute a prominent portion in the disputed domain name in determining confusing similarity between the disputed domain name and the Complainant’s mark. Therefore, the addition of the gTLD suffix “.com” in the disputed domain name does not have any impact on the avoidance of confusing similarity.
As such, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s mark. B. Rights or Legitimate Interests
The Complainant must first make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name under the Policy, paragraph 4(a)(ii), and then the burden of production shifts to the Respondent to demonstrate it does have rights or legitimate interests. (See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It also contends that there is neither a use nor are any preparations to use the disputed domain name in connection with a bona fide offering of goods or services. It continues to contend that there is no and has never been a business relationship between the parties. It submits that the Respondent is not commonly known by the disputed domain name. The Complainant asserts that the Respondent has not made noncommercial use of the disputed domain name, rather it redirects to a shopping website offering orthopedic insoles made by a German company that is completely unrelated to the Complainant.
The Panel finds that the Respondent has no connection or affiliation with the PORSCHE mark in the disputed domain name or in any other manner. The Panel agrees that the disputed domain name redirects to a shopping website offering orthopedic insoles made by a German company that is completely unrelated to the Complainant. As such, the Panel finds that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, nor is such use a legitimate noncommercial or fair use.
Under the circumstance that the Respondent did not reply and that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, the Panel concludes that the second element of the Policy, paragraph 4(a) has been established. (See De Agostini S.p.A. v. Marco Cialone,WIPO Case No. DTV2002-0005; and Accor v. Eren Atesmen, WIPO Case No. D2009-0701). C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, among others, shall be evidence of the registration and use of a domain name in bad faith: 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 the respondent’s website or location (paragraph 4(b)(iv)).
The Complainant contends that this is a case of paragraph 4(b)(iv) of the Policy because by using the disputed domain name the Respondent attempts to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website and of the product offered on the website.
The Panel recognizes that the Complainant’s mark is a well-known trademark internationally in the field of automobiles. In light of the well-known status of the Complainant’s mark established well before the registration date of the disputed domain name, it is inferred that the Respondent registered the disputed domain name with the knowledge of the Complainant’s rights in the Complainant’s mark. This is because it is unlikely that the Respondent would have registered the disputed domain name unless it was aware of the existence of the trademark PORSCHE or that the disputed domain name might be of some type of economic advantage in association with the Complainant’s mark (see The Gap, Inc. v. Deng Youqian,WIPO Case No. D2009-0113; Caesars World, Inc. v. Forum LLC, WIPO Case No. D2005-0517). Registration of the disputed domain name incorporating the well-known Complainant’s mark PORSCHE by an entity that has no legitimate relationship with the Complainant itself demonstrates bad faith (Telstra Corporation Limited, v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
The Panel observes that the website resolved by the disputed domain name displays a web page in Japanese titled “Shoes reduced unilaterally is a serious problem” with the subtitle “Is only one fewer shoes cause leg problems?” clicking the field of which redirects to a shopping website offering orthopedic insoles made by a German company that is completely unrelated to the Complainant. As such, the Panel infers that the Respondent, by using the disputed domain name, is intentionally misleading the consumers and confusing them so as to attract them to its website or its sponsored links, making them believe that the websites at the disputed domain name and the websites behind those links are associated with or recommended by the Complainant. As a result, the Respondent may generate unjustified revenues for its redirecting to such a shopping website. The Respondent is therefore illegitimately capitalizing on the reputation of the Complainant’s mark. See Dolce & Gabbana s.r.l. v. Domain ID Shield Service / Misato Takahashi, bkt,WIPO Case No. D2013-0600. See also Volvo Trademark Holding AB v. Unasi, Inc.,WIPO Case No. D2005-0556.
For all of the above considerations, the Panel finds that the Respondent, by using the disputed domain name, is intentionally misleading the consumers and confusing them so as to attract them to the websites at the disputed domain name, making them believe that the website is associated with or recommended by the Complainant. The Respondent is therefore illegitimately capitalizing on the goodwill of the Complainant’s mark.
As such, the Panel concludes that the Respondent registered and is using the disputed domain name 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 the Complainant.
Ho-Hyun Nahm
Sole Panelist
Date: July 26, 2014
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