The Complainant is Dr. Ing. h.c. F. Porsche AG of Stuttgart, Germany (hereinafter “Complainant”), represented by UNIT4 IP Rechtsanwälte, Stolz Stelzenmüller Weiser Grohmann Partnerschaft mbB Rechtsanwälte, Germany.
The Respondent is PRIVACYDOTLINK CUSTOMER 3692605 of Seven Mile Beach, Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland (“United Kingdom”) / Carlos Fuentes of Buenos Aires, Argentina (hereinafter “Respondent”). 2. The Domain Name and Registrar
The disputed domain name is registered with Uniregistrar Corp (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 29, 2018. On October 30, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 30, 2018, 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 October 31, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on November 5, 2018 (the amendment and the Complaint will hereinafter be referred to jointly and severally as “the Complaint”).
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 November 6, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 26, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 27, 2018.
The Center appointed M. Scott Donahey as the sole panelist in this matter on December 5, 2018. 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 the manufacturer of automobiles and has been selling its Porsche for more than seventy years. Complainant’s name is well known, not only in the automobile industry, but by consumers throughout the world. Complainant has established a reputation for high performance small vehicles known in the industry as “sports cars.” Complainant operates a web site to which the domain name resolves, which has links to “subwebsites” directed at specific audiences, such as the Unites States of America (“Unite States”) and the Latin American countries. The name Porsche does not correspond to any common word in the English language spoken in the United States, nor in the Spanish language spoken in Argentina.
Complainant is the owner of numerous trademarks for the name PORSCHE. Because of the fame of its automobiles, Complainant has registered its PORSCHE trademark on numerous types of goods which benefit from the name recognition of Complainant’s famous mark. Complainant has a number of European Union Trademarks for PORSCHE, which date back at least as early as December 12, 2000. Complaint, Annex 3. Complainant’s International trademarks for PORSCHE were registered with the World Intellectual Property Organization as early as October 27, 1990. Complainant, Annex 4.
The city of Dallas (whose name is appended to the word “porsche” in the disputed domain name ”) is located in the United States. Complainant has a retailer of its automobiles (an automobile “dealer”) located in that city. Complainant holds registrations for PORSCHE trademarks in that country which were registered with the United States Patent and Trademark Office (USPTO) at least as early as January 10, 1956. Complaint, Annex 8.
Respondent indicated in the registration of the disputed domain name that Respondent was a resident of Argentina. Complainant is the owner of at least three PORSCHE trademarks in the country of Argentina, the earliest of which was registered on July 28, 2014. Complaint, Annexes 13, 14, and 15.
Respondent registered the disputed domain name on March 26, 2017. After registering the disputed domain name Respondent promptly offered it for sale. Complaint, Annex 10. The disputed domain name is currently being listed for sale at a price of USD 25,000. Complaint, Annex 11. 5. Parties’ Contentions A. Complainant
Complainant asserts that the disputed domain name is confusingly similar to its PORSCHE trademark. Complainant alleges that Respondent has not been licensed or in any way permitted to use the PORSCHE mark, nor does it have any right or legitimate interest in that mark. Finally, Complainant contends that Respondent has registered and is using the mark in bad faith by offering it for sale on the world wide web and making no other use of the disputed domain name. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute:
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
(i) that 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) that the respondent has no rights or legitimate interests in respect of the domain name; and,
(iii) that the domain name has been registered and is being used in bad faith.” A. Identical or Confusingly Similar
The disputed domain name consists of Complainant’s famous trademark to which is appended the name of a large, well-known city in the state of Texas, United States, in which Complainant has a dealer . The Panel finds that the disputed domain name is confusingly similar to Complainant’s PORSCHE mark. B. Rights or Legitimate Interests
While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.
In the present case, Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain names and Respondent has failed to assert any such rights. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain names. C. Registered and Used in Bad Faith
Respondent registered the disputed domain name, which incorporates Complainant’s famous trademark, long after Complainant’s mark had been established as a famous trademark worldwide and after it had been registered in Argentina, where Respondent resides and after it had been registered in the United States, in which the city of Dallas, whose name was appended to Complainant’s famous mark in the disputed domain name, is located. Since Respondent registered the disputed domain name, the disputed domain name has never been used to resolve to a web site, but has only been offered for sale on the world wide web. Accordingly, the Panel finds that the disputed domain name has been 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.
M. Scott Donahey
Sole Panelist
Date: December 6, 2018
Full & Egal Universal Law Academy