The Complainant is Dr. Ing. h.c. F. Porsche AG of Stuttgart, Germany, represented by Lichtenstein, Körner & Partners, Germany.
The Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, United States of America ("United States") / Deng Weikang, Dengweikang of Beijing, 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 February 23, 2017. On February 23, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 24, 2017, 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 March 6, 2017, 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 March 6, 2017.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 9, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 29, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 30, 2017.
The Center appointed Cherise Valles as the sole panelist in this matter on April 10, 2017. 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 produced sports cars for more than 70 years, using the term "Porsche" as the prominent and distinctive part of its trade name. The Complainant's trade name "Porsche" and PORSCHE mark are known, and have a favourable reputation, around the world.
The Complainant is the owner of multiple trademark registrations in several jurisdictions, including in the United States, for the mark PORSCHE. These include the following:
- WIPO trademark registration No. 562572 for PORSCHE, registered on October 27, 1990, in classes 12 and 42;
- WIPO trademark registration No. 639048 for PORSCHE, registered on March 13, 1995, in classes 3, 8, 9, 14, 16, 18, 21, 24, 25, 28, 33 and 34;
- WIPO trademark registration No. 640976 for PORSCHE, registered on July 13, 1995, in classes 36, 37, 39 and 42;
- WIPO trademark registration No. 657048 for PORSCHE, registered on January 27, 1996, in classes 36, 39 and 42;
- United States trademark registration No. 0618933 for PORSCHE, registered on January 10, 1956, in class 12;
- United States trademark registration No. 2134692 for PORSCHE, registered on February 3, 1998, in class 25;
- United States trademark registration No. 2200107 for PORSCHE, registered on October 27, 1998, in classes 39 and 42;
- United States trademark registration No. 1431901 for PORSCHE, registered on March 10, 1987, in class 16;
- United States trademark registration No. 1315679 for PORSCHE, registered on January 22, 1985, in class 14;
- United States trademark registration No. 1279014 for PORSCHE, registered on May 22, 1984, in class 21;
- United States trademark registration No. 1280748 for PORSCHE, registered on June 5, 1984, in class 18;
- United States trademark registration No. 1315853 for PORSCHE, registered on January 22, 1985, in class 24;
- United States trademark registration No. 1503994 for PORSCHE, registered on September 13, 1988, in class 25;
- United States trademark registration No. 1370326 for PORSCHE, registered on November 12, 1985, in international class 28;
- German trademark registration No. 643195 for PORSCHE, registered on August 26, 1953, in classes 7, 8 and 12;
- WIPO trademark registration No. 179928 for PORSCHE, registered on October 8, 1954, in classes 7, 8 and 12;
- WIPO trademark registration No. 473561 for PORSCHE, registered on September 29, 1982, in classes 3, 8, 9, 14, 16, 18, 21, 24, 25, 28, 33 and 34;
- European trademark registration No. 000073098 for PORSCHE, registered on December 12, 2000, in classes 3, 8, 9, 12, 14, 16, 18, 21, 24, 25, 28, 34, 35, 36, 37 39 and 42; and
- Canadian trademark registration No. TMA117102 for PORSCHE, registered on March 4, 1960, in class 12.
The Complainant has also registered the trademark PORSCHE as the domain name .
The disputed domain name was registered on January 20, 2016, and resolves to a parking page which simply announces that a website will be "coming soon". 5. Parties' Contentions A. Complainant
The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, the Complainant asserts that:
The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
- The disputed domain name is identical to the Complainant's registered trademark, PORSCHE, in light of the fact that it wholly incorporates the Complainant's mark.
The Respondent lacks rights or legitimate interests in the disputed domain name.
- The Complainant states that the Respondent should be considered as having no rights or legitimate interests in the disputed domain name. The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name that included its trademarks.
The disputed domain name has been registered and is being used in bad faith.
- The Complainant asserts that the disputed domain name was registered and is being used in bad faith. The mere fact of registration of a domain name that is confusingly similar or identical to a famous trademark by an entity that has no relationship to that mark is itself evidence of bad faith registration and use.
The Complainant requests the Panel to issue a decision finding that the disputed domain name be transferred to the Complainant, in accordance with paragraph 4(i) of the Policy. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
The Policy provides specific remedies to trademark owners against registrants of domain names where the owner of the mark (a complainant) establishes each of the following elements:
- the domain name is identical or confusingly similar to a trademark in which the complainant has rights;
- the respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name was registered and is being used in bad faith.
The Complainant has the burden of proof in establishing each of these elements.
The Respondent has failed to file a Response in this proceeding and is therefore in default and the Panel may draw appropriate inferences from the available evidence submitted by the Complainant. A. Identical or Confusingly Similar
To prove this element, the Complainant must have trademark rights and the disputed domain name must be identical or confusingly similar to the Complainant's trademark.
The Complainant is the sole and exclusive owner of the PORSCHE mark. The Complainant is the owner of multiple trademark and domain name registrations worldwide for the trademark PORSCHE, as indicated in Section 4 above.
The disputed domain name wholly incorporates the Complainant's PORSCHE registered mark. Earlier UDRP decisions have held that when a domain name wholly incorporates a complainant's registered trademark, it is sufficient to establish that a domain name is identical or confusingly similar for the purpose of the Policy. See, among others, Swarovski Aktiengesellschaft v. mei xudong,WIPO Case No. D2013-0150.
While the Top-Level Domain ".car" is typically disregarded under the first element confusing similarity test, this Panel finds that it increases the likelihood of confusion regarding the Complainant's association with the disputed domain name, given that the Complainant's business is making Porsche cars. Previous panels have consistently held that a disputed domain name that consists merely of a complainant's trademark and an additional term that closely relates to and describes that complainant's business is confusingly similar to that complainant's trademarks.
In the light of the foregoing, the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant's registered mark and that paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
The burden of proof is on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. Under the UDRP, if a prima facie case is established by the Complainant, then the burden of production of evidence shifts to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy enumerates three non-exclusive ways in which a respondent may demonstrate rights or legitimate interests in a domain name: "[a]ny of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
The Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).
Previous panels have established that in order to shift the burden of proof to the Respondent, it is sufficient for the Complainant to make a prima facie showing that the Respondent has no right or legitimate interest in the disputed domain name.
The Complainant has registered the trademark PORSCHE in several jurisdictions. The Complainant has never had a business relationship with the Respondent, and the Respondent is not commonly known by any name or trade name that incorporates the word "Porsche". The Respondent has never received authorization or a license to use the Complainant's PORSCHE mark in any way or manner, including registering a domain name containing the mark. Previous UDRP panels have found that in the absence of any license or permission from the complainant to use such widely-known trademark, no actual or contemplated bona fide or legitimate use of the domain name can reasonably be claimed. See, for example, Groupe Auchan v. Gan Yu,WIPO Case No. D2013-0188.
Moreover, the disputed domain name resolves to a parking page which announces that a website will be "coming soon". The Respondent's failure to use the disputed domain name as a genuine website suggests that the Respondent's interests in the disputed domain name are not legitimate. Given the failure to use the website more than a year after its initial registration, there is no evidence that the Respondent intends to use the disputed domain name in connection with a bona fide offering of goods or services.
In the light of the foregoing, the Panel finds that the Complainant has established an unrebutted prima facie case and concludes that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(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;
(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 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.
As indicated in Section 4 above, the Complainant's PORSCHE trademarks were registered long before the disputed domain name. The Respondent must have been aware of the existence of the Complainant's rights in the trademarks when registering the disputed domain name. Previous panels have held that the registration of a domain name obviously connected with well-known trademarks by someone without any connection to these trademarks suggests opportunistic bad faith. See, among others, LEGO Juris A/S v. Reiner Stotte,WIPO Case No. D2010-0494.
The Respondent has used a privacy service to conceal the name and address of the beneficiary of the disputed domain name. Past UDRP panels have held that employing such measures serves as evidence of bad faith registration and use. See Dr. Ing. H.C. F. Porsche AG v. Domains by Proxy, Inc and Sabatino Andreoni,WIPO Case No. D2003-0230.
Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name under paragraph 4(a)(iii) 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.
Cherise Valles
Sole Panelist
Date: April 24, 2017
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