Complainant is Dr. Ing. h.c. F. Porsche AG of Stuttgart, Germany, represented by Lichtenstein, Körner & Partners of Stuttgart, Germany.
Respondent is Porsche Cyprus, represented by Yalchin Halil Mehmet of Kyrenia, Cyprus. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with Internet Domain Service BS Corp. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 7, 2016. On January 7, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 8, 2016, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 21, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 10, 2016. The Response was filed with the Center on January 28, 2016.
The Center appointed Douglas Isenberg as the sole panelist in this matter on February 11, 2016. 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 states 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.” Complainant further states that its “cars are distributed worldwide through a network of official dealers”.
Complainant states, and provides evidence to support, that it is the owner of a number of trademark registrations for PORSCHE (the PORSCHE Trademark), including WIPO Reg. Nos. 562,572 (registered October 27, 1990), 179,928 (registered October 8, 1954), 473,561 (registered September 29, 1982), 639,048 (registered March 13, 1995), 640,976 (registered July 13, 1995), 657,048 (registered January 27, 1996), 459,706 (registered February 24, 1981), and 473,561 (registered September 29, 1982); U.S. Reg. No. 618,933 (registered January 10, 1956); and OHIM Reg. No. 73,098 (registered December 12, 2000).
The Disputed Domain Name was created on December 6, 2013. Complainant states, and provides evidence to support, that the website using the Disputed Domain Name “redirects to a website” that “promote[s] the sale of new and used cars of many brands,” including Bentley, Rolls Royce, Lotus, Ferrari, BMW, Audi and others. A printout from the website included with the Complaint includes logos for Ferrari, Lotus, Bentley and Lamborghini.
Complainant states, and provides evidence to support, that it contacted Respondent about the Disputed Domain Name in November and December 2015. Respondent replied stating, in part, that the Disputed Domain Name “was freely available and we purchased it for consideration” and that “[t]he public is not confused and know exactly that we deal with all brands of performance cars grouped together.” 5. Parties’ Contentions A. Complainant
Complainant contends, in relevant part, as follows:
- Complainant has rights in and to the PORSCHE Trademark as a result of the trademark registrations cited above. Complainant further contends that the Disputed Domain Name is confusingly similar to these trademarks because “the domain name embodies this trademark identically and entirely, just adding a geographical name as a descriptive element. Such element adds to the confusion because the public is led to believe that the trademark owner offers information on its activities in this part of the world (Cyprus).”
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “[t]here is not and has never been a business relationship between the parties”; Respondent is not commonly known by the Disputed Domain Name, and Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services because Respondent only offers Porsche-branded cars that “have been modified, manipulated and tuned” such that the cars sold by Respondent “are no longer Porsche cars,” Respondent sells other brands of cars and Respondent fails to disclose its lack of a relationship with Complainant.
- The Disputed Domain Name was registered and is being used in bad faith because “the respondent claims to be a subsidiary or the official dealer of Porsche cars in the whole of Cyprus, whereas the official dealer is an entirely different company located in the southern part of Cyprus.” B. Respondent
Respondent contends, in relevant part, as follows:
- Respondent “operate[s] as an independent dealer selling Porsche motor cars.” Respondent “duly purchased” Porsche-branded cars and “refer [to them] as Porsche only because they are as original from Porsche factory.” “Our building do[es] not pass or resemble a Porsche dealership at all.” Respondent’s showroom contains Porsche cars as well as Mercedes, Ferrari, BMW and VW.
- “We are free agents operating in North Cyprus and our domain name simply verifies who we are, where we are and what we do. We do not confuse the public because there is no authorised Porsche dealership here in North Cyprus.”
- “The name of Porsche is not registered” in Respondent’s location.
- The Disputed Domain Name “was free to purchase” by Complainant, which “unfortunately missed the opportunity” to do so.
- Respondent’s response to Complainant’s demands, prior to the filing of the Complaint, were marked “without prejudice” and “should be struck out by the decision making body” because Complainant is “ignoring basic principles of law”. 6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) 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. Policy, paragraph 4(a).
As an initial matter, the Panel addresses Respondent’s concern that a document from it in the Complaint marked “without prejudice” should be disregarded. The Panel is aware of no authority or rules of evidence applicable to proceedings under the Policy that require a panel to disregard such a document. Nevertheless, the document is not determinative to the outcome of this decision. A. Identical or Confusingly Similar
Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the PORSCHE Trademark. Numerous previous panels have agreed in decisions involving Complainant.
As to whether the Disputed Domain Name is identical or confusingly similar to the PORSCHE Trademark, the relevant comparison to be made is with the second-level portion of the domain name only (i.e., “cyprusporsche”), as it is well-established that the generic Top-Level Domain (i.e., “.com”) may be disregarded for this purpose. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2 (“The applicable top-level suffix in the domain name (e.g., ‘.com’) would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark.”).
Notably, the Disputed Domain Name contains the PORSCHE Trademark in its entirety. Previous panels have found that “the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy.” Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. See also Hoffmann-La Roche Inc., Roche Products Limited v. Vladimir Ulyanov,WIPO Case No. D2011-1474 (“when a domain name wholly incorporates a complainant’s registered mark, that may be sufficient to establish confusing similarity for purposes of the Policy”).
In addition, the Disputed Domain Name contains the geographic identifier “cyprus". Previous panels have found that “the addition of geographic identifier words could not avoid a finding of confusing similarity, but instead, increase[] the likelihood of confusion between the Domain Name[] and the Complainant’s trademark.” Inter-Continental Hotels Corporation v. Hui Lian Yang/Yang Hui Lian; a/k/a Jian Ren Zhou/Zhou Jian Ren; a/k/a Jian Guo Liu/Liu Jian Guo,WIPO Case No. D2014-0272.
Accordingly, the Panel finds that Complainant has proven the first element of the Policy. B. Rights or Legitimate Interests
Complainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “[t]here is not and has never been a business relationship between the parties”; Respondent is not commonly known by the Disputed Domain Name, and Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services because Respondent only offers Porsche-branded cars that “have been modified, manipulated and tuned” such that the cars sold by Respondent “are no longer Porsche cars”, Respondent sells other brands of cars and Respondent fails to disclose its lack of a relationship with Complainant.
Under the Policy, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the 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.” WIPO Overview 2.0, paragraph 2.1.
Respondent has not denied any of Complainant’s arguments regarding rights or legitimate interests. Rather, Respondent appears to argue that it has the right to register and use the Disputed Domain Name simply because the Disputed Domain Name had not been registered by Complainant and because it resells Porsche-branded cars. With respect to Respondent’s first argument, panels have routinely said that “[t]he fact that the disputed domain name was available for registration when the Respondent registered it does not confer rights or legitimate interests to the Respondent.” Calvin Klein Trademark Trust and Calvin Klein Inc. v. Wang Yanchao,WIPO Case No. D2014-1413.
With respect to Respondent’s second argument, the Panel refers to paragraph 2.3 of the WIPO Overview 2.0 (citing Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903):
Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site’s accurately and prominently disclosing the registrant’s relationship with the trademark holder. The respondent must also not try to “corner the market” in domain names that reflect the trademark.
Here, Respondent has admitted that it sells brands of cars other than Porsche (as also indicated on Respondent’s website using the Disputed Domain Name) and there is no indication in the record that Respondent has accurately and prominently disclosed its lack of a relationship with Complainant.
In light of the above, the Panel is satisfied that Complainant has satisfied the second element of the Policy. C. Registered and Used in Bad Faith
Whether a domain name was registered and is being used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the respondent has registered or the respondent has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or (ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online 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 registrant’s website or location. Policy, paragraph 4(b).
In this case, Complainant appears to argue that bad faith exists pursuant to paragraph 4(b)(iv), for the reasons set forth above.
Previous panels have found bad faith where a respondent is using a disputed domain name “in connection with [a] fully developed commercial website[] that prominently use[s] Complainants’… trademark[],” Terex Corporation and Genie Industries, Inc. v. Powko Industries LLC,WIPO Case No. D2010-1468; and, where the respondent’s website “offers for sale products of Complainant’s competitors.” Genie Industries, Inc. v. Material Flow,WIPO Case No. D2012-2336. See also, e.g., General Electric Company v. Japan, Inc.,WIPO Case No. D2001-0410 (“Regardless of the nature of Respondent’s business and its dealing with products of [complainant], it is unauthorized to use the [complainant’s] Marks in connection with its business or imply that there is an affiliation, association, or endorsement of its business by [complainant] through its use of the Domain Name. Respondent’s Domain Name is likely to confuse consumers to believe that they have reached a website of [complainant]”); and The Dow Chemical Company v. dowaychemical eva_hwang@ +86.7508126859,WIPO Case No. D2008-1078 (finding bad faith where Complainant alleged that Respondent’s website “fraudulently impersonat[ed] the Complainant” because “[t]he Respondent was clearly specifically targeting the Complainant’s trademark and attempting to divert Internet users searching for the Complainant’s product to the Respondent’s website”).
The fact here that Respondent’s physical “building do[es] not pass or resemble a Porsche dealership at all” is irrelevant given that Internet users may not immediately, if ever, view Respondent’s building. Rather, the confusion caused by Respondent’s website establishes bad faith because “Respondent’s use of the Domain Name[] to promote and sell the products of other manufacturers indicates an attempt to divert Internet users looking for Complainant to Respondent’s website for commercial gain.” Broan-Nutone, LLC v. Ready Set Sales,WIPO Case No. D2010-0920.
Accordingly, the Panel finds that Complainant has proven the third element of the Policy. 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.
Douglas M. Isenberg
Sole Panelist
Date: February 19, 2016
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