The Complainant is Dr. Ing. h.c. F. Porsche AG, Germany, represented by UNIT4 IP Rechtsanwälte, Stolz Stelzenmüller Weiser Grohmann Partnerschaft mbB Rechtsanwälte, Germany.
The Respondent is 覃义惠 (Tan Yihui), China.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on July 23, 2021. On July 23, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 27, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 27, 2021, 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 in English on July 30, 2021.
On July 27, 2021, the Center transmitted another email communication to the Parties in English and Chinese regarding the language of the proceeding. On July 30, 2021, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
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 in English and Chinese of the Complaint, and the proceedings commenced on August 2, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 22, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 27, 2021.
The Center appointed Joseph Simone as the sole panelist in this matter on September 10, 2021. 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 BackgroundThe Complainant, Dr. Ing. h.c. F. Porsche AG, submits that it is a world-famous manufacturer of sports cars for more than 70 years, using PORSCHE as the prominent and distinctive portion of its trade mark and trade name.
The Complainant has an extensive global trade mark portfolio, including the following:
- European Union Trade Mark Registration No. 000073098 PORSCHE in Classes 3, 8, 9, 12, 14, 16, 18, 21, 24, 25, 28, 34, 35, 36, 37, 39, and 42, registered on December 12, 2000;
- European Union Trade Mark Registration No. 018117298 PORSCHE in Classes 3, 4, 5, 6, 7, 8, 9, 11, 12, 14, 16, 18, 20, 21, 24, 25, 26, 27, 28, 33, 34, 35, 36, 37, 39, 41, 42, and 43, registered on January 9, 2020; and
- International Trade Mark Registration No. 562572 PORSCHE in Classes 12 and 42, registered on October 27, 1990, and extended into China.
The disputed domain name was registered on December 15, 2020.
The Complainant asserts that, at the time the Complaint was filed, the disputed domain name did not resolve to an active website. But the Complainant also asserts that, the disputed domain name once resolved to a website where visitors were asked for sensitive personal information and front and back images of their driver’s license.
5. Parties’ Contentions A. ComplainantThe Complainant asserts that it has prior rights in the PORSCHE trade marks and that it is a leading player in the sports car industry.
The Complainant further notes that the disputed domain name is identical or confusingly similar to the Complainant’s PORSCHE trade marks.
The Complainant asserts that it has not authorized the Respondent to use the PORSCHE mark and/or the Porsche name, and there is no evidence to suggest that the Respondent has used, or undertaken any demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services.
Indeed, the Complainant asserts that the Respondent registered the disputed domain name knowing the Complainant’s existence, and there is no plausible good faith reason or logic for the Respondent to have registered the disputed domain name, especially after considering the attendant circumstances, any use of the disputed domain name whatsoever must be in bad faith.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings A. Language of the ProceedingsThe language of the registration agreement for the disputed domain name is Chinese.
Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceedings shall be the language of the registration agreement.
Paragraph 11(a) allows the Panel to determine the language of the proceedings in consideration of all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceedings. In other words, it is important to ensure fairness to the parties and to maintain an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not unduly burden the parties or delay the proceedings.
The Complainant has requested that English be the language of the proceedings, for the following reasons:
- the disputed domain name consists entirely of Latin letters;
- the Respondent understands English, as he operated a fake Porsche website under the disputed domain name entirely in English; and
- this also shows that the Respondent aimed at English speaking international recipients and Internet users worldwide.
If the proceedings were to be conducted in Chinese, the Complainant would have to retain specialized translation services at a cost very likely to be higher than the overall cost of these proceedings. The use of Chinese in this case would therefore impose a burden on the Complainant which must be deemed significant in view of the low cost of these proceedings.
In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time, and costs.
The Panel has carefully considered all elements of this case, in particular, the Complainant’s request that the language of the proceeding be English.
The Panel notes, however, that the Respondent did not submit any Response on the merits of these proceedings, while it was invited to do so in either English or Chinese. The Panel has also considered the fact that the disputed domain name is in English and written in Latin letters and not in Chinese characters, and the fact that adopting Chinese as the language of these proceedings could lead to unwarranted delays and costs for the Complainant. In addition, the Center formally notified the Complaint in English and Chinese and gave the Respondent an opportunity to reply in either language.
Taking into account all of the present circumstances, the Panel therefore finds that the Respondent would not be prejudiced if English is adopted as the language of these proceedings.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceedings shall be English.
B. Identical or Confusingly SimilarThe Panel acknowledges that the Complainant has established rights in the PORSCHE trade mark in many territories around the world.
Disregarding the generic Top Level Domain (“gTLD”) “.vip”, the disputed domain name has incorporated the trade mark PORSCHE in its entirety.
That said, the Panel further notes that the addition of the “.vip” gTLD does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trade mark.
The Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in the PORSCHE trade mark and in demonstrating that the disputed domain name is identical or confusingly similar to its mark.
C. Rights or Legitimate InterestsPursuant to paragraph 4(c) of the Policy, the complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of producing evidence in support of its rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.
The Complainant asserts that it has not authorized the Respondent to use its trade mark, and there is no evidence to suggest that the Respondent has used, or undertaken any demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. The Respondent is not commonly known by the disputed domain name. Neither is the Respondent making a legitimate noncommercial or fair use of the disputed domain name.
Thus, the Complainant has established its prima facie case with satisfactory evidence.
The Respondent did not file a formal response and has therefore failed to assert factors or put forth evidence to establish that it enjoys rights or legitimate interests in the disputed domain name. As such, the Panel concludes that the Respondent has failed to rebut the Complainant’s prima facie showing of the Respondent’s lack of rights or legitimate interests in the disputed domain name, and that none of the circumstances of paragraph 4(c) of the Policy is applicable in this case.
As previously noted above, the disputed domain name incorporates the Complainant’s mark in its entirety with the “.vip” gTLD, which is associated with the Complainant’s industry. Such usage creates a high risk of implied affiliation and cannot constitute fair use as it effectively suggests sponsorship or endorsement by the Complainant. See WIPO Overview 3.0, section 2.5.1.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad FaithParagraph 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 trade mark 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) circumstances indicating that the respondent registered the domain name to prevent the owner of the trade mark 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) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its 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 its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances in which bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trade mark of another party. See Match.com, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding headings, the Panel believes that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(b)(iv) of the Policy.
When the Respondent registered the disputed domain name on December 15, 2020, the PORSCHE trade marks were already widely known and directly associated with the Complainant.
Given the extensive prior use and fame of these marks, in the Panel’s view, the Respondent should have been aware of the Complainant’s marks when registering the disputed domain name.
Meanwhile, the Panel’s own research suggests that the PORSCHE trade marks have already been regarded as “well-known” (驰名商标) in China by 2020.
The Respondent has provided no evidence to justify his registration of the disputed domain name. Given the foregoing, it would be unreasonable to conclude that the Respondent, at the time of the registration of the disputed domain name, was unaware of the Complainant’s trade mark, or that the Respondent’s adoption of the uncommon and distinctive trade mark Porsche was a mere coincidence.
The Complainant’s registered trade mark rights in PORSCHE for its signature products and services predate the registration date of the disputed domain name. A simple online search for the term “porsche” would have revealed that it is a world-renowned brand.
The Panel is therefore of the view that the Respondent registered the disputed domain name with full knowledge of the Complainant’s trade mark rights, a finding which is reinforced considering the disputed domain name is identical to the Complainant’s well-known trade mark.
The Complainant provided evidence that the disputed domain name previously resolved to a website containing pictures of the Complainant’s products and a form seeking sensitive personal details, including pictures of Internet users’ driver licenses, and currently does not resolve to an active website. The Panel finds the use of the disputed domain name to impersonate the Complainant and phish for sensitive personal data constitutes clear evidence of bad faith. Furthermore, the fact that the disputed domain name does not currently resolve to an active website does not prevent a finding of bad faith in these circumstances.
Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith pursuant to paragraph 4(a)(iv) of the Policy.
7. DecisionFor 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
Joseph Simone
Sole Panelist
Date: September 24, 2021