The Complainant is Dr. Ing. h.c. F. Porsche AG of Stuttgart, Germany, represented by Lichtenstein, Körner & Partners, Germany.
The Respondent is CHENA HAO of FuJian, China.
The disputed domain name <porschedesignde.com> is registered with Beijing Innovative Linkage Technology Ltd. dba dns.com.cn (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 2, 2013. On September 2, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 3, 2013, 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 September 3, 2013 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 September 6, 2013.
On September 3, 2013, the Center transmitted an email to the parties in both Chinese and English language regarding the language of the proceeding. On September 6, 2013, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by 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 September 13, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 3, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 4, 2013.
The Center appointed Jonathan Agmon as the sole panelist in this matter on October 16, 2013. 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.
The Complainant is a well-known maker of cars. The Complainant has been a maker of sports cars for more than 70 years, utilizing the trademark PORSCHE as the prominent and distinctive part in its trade name. The trademark PORSCHE is known throughout the world and enjoys a reputation for high quality performance sports cars. The Complainant’s cars are distributed worldwide through a network of official dealers.
The Complainant has exclusively licensed its trademark PORSCHE DESIGN to Porsche Design Management GmbH & Co KG. The Complainant, through its affiliate, is one of the world’s leading and most prestigious designers and producers of high quality consumer products, namely watches, luggage, brief cases, glasses, writing tools, knives, leatherwear, wallets, key-holders, organizers, golf accessories and shoes, including sneakers.
The Complainant, through its affiliate, has also developed a presence on the Internet and is the owner of the domain names <porsche.com> and <oorsche-design.com>.
The Complainant is the owner of numerous trademark registrations for the PORSCHE and PORSCHE DESIGN marks around the world. For example:
German registration No. 643195 – PORSCHE, with the registration date of August 26, 1953; United States registration No. 0618933 – PORSCHE, with the registration date of January 10, 1956; United States registration No. 1431901 – PORSCHE, with the registration date of March 10, 1987; International registration No. 456717 – PORSCHE DESIGN, with the registration date of July 29, 1980; International registration No. 562572 – PORSCHE, with the registration date of October 27, 1990; International registration No. 639048 – PORSCHE, with the registration date of March 30, 1995; International registration No. 640976 – PORSCHE, with the registration date of July 13, 1995; International registration No. 657048 – PORSCHE, with the registration date of January 01, 1996; International registration No. 2134692 – PORSCHE, with the registration date of February 3, 1998; etc.
The disputed domain name is currently inactive.
The Complainant argues that the disputed domain name is confusingly similar to the Complainant’s trademarks PORSCHE and PORSCHE DESIGN.
The Complainant further argues that the PORSCHE mark is very famous and well-known around the world and is identified with the Complainant and its affiliate.
The Complainant further contends that the additional terms, included in the disputed domain name, are merely descriptive words in English or German that do not avoid a finding of confusing similarity.
The Complainant further argues it has not licensed or otherwise permitted the Respondent to use its PORSCHE or PORSCHE DESIGN trademarks and is not affiliated or otherwise connected to the Respondent.
The Complainant further argues that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant further argues that the Respondent is not using nor preparing to use the disputed domain name with a bona fide offering of goods or services; that there is no and has never been a business relationship between the Complainant and Respondent; that the Respondent is not commonly known by the disputed domain name; that the Respondent is not making noncommercial use of the disputed domain name, rather that the Respondent redirects the disputed domain name to a shopping website for counterfeit products.
The Complainant further argues that the Respondent has registered and uses the disputed domain name in bad faith.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 11(a) of the Rules provides that:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The language of the Registration Agreement for the disputed domain name is Chinese.
The Complainant requested that the language of the proceeding be English.
The Panel cites the following with approval:
“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004).
In deciding the language of the proceeding, the Panel takes the following into consideration:
a) The disputed domain name is primarily in English as it includes words in the English language, namely, “design” and “de” which stands for country code Top-Level Domain for Germany.
b) The disputed domain name is comprised of Latin characters.
c) The Respondent did not object to the language of the proceeding being English.
Upon considering the above, the Panel concludes, according to the Rules, paragraph 11(a), that there is no prejudice or unfairness to the Respondent for these proceedings to be conducted in English and for its decision to be rendered in English. Accordingly, the Panel determines that the language of this administrative proceeding should be English.
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant is the owner of several trademark registrations for the mark PORSCHE and PORSCHE DESIGN around the world. For example: German registration No. 643195 – PORSCHE, with the registration date of August 26, 1953; United States registration No. 0618933 – PORSCHE, with the registration date of January 10, 1956; United States registration No. 1431901 – PORSCHE, with the registration date of March 10, 1987; International registration No. 562572 – PORSCHE, with the registration date of October 27, 1990; International registration No. 639048 – PORSCHE, with the registration date of March 30, 1995; etc. These International trademark registrations also extend to China, where the Respondent allegedly resides.
The Complainant is also the owner of the domain names <porsche.com> and <porsche-design.com>.
The disputed domain name <porschedesignde.com> differs from the registered trademark PORSCHE DESIGN by the additional suffix “de” and the additional generic Top-Level Domain (“gTLD”) “.com”.
The Panel finds that the Complainant’s trademark, PORSCHE DESIGN, is the dominant element in the disputed domain name.
The difference between the disputed domain name and the Complainant’s trademark PORSCHE DESIGN is the additional descriptive term “de”, which is widely recognized abbreviation or country code for Germany. (See Merck KGaA v. Registrant [3644982]: Chen Yan Hua, WIPO Case No. D2011-1010).
Previous UDRP panels have found that the mere addition of a non-significant element does not sufficiently differentiate the domain name from the registered trademarks: “The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark” (Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505). Also, “the trademark RED BULL is clearly the most prominent element in this combination, and that may cause the public to think that the domain name <redbull-jp.net> is somehow connected with the owner of RED BULL trademark” (Red Bull GmbH v. PREGIO Co., Ltd., WIPO Case No. D2006-0909).
Also, the addition of the gTLD “.com” to the disputed domain name does not avoid confusing similarity. See F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Thus, the gTLD “.com” is without legal significance since the use of a gTLD is technically required to operate the domain name.
Therefore, in the circumstances of this case, the Panel finds that the Complainant has met its burden of establishing that the Respondent’s disputed domain name is confusingly similar to the Complainant’s trademark.
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to show that it has rights or legitimate interests of respect to the disputed domain name (Policy, paragraph 4(a)(ii)).
In the present case, the Complainant alleged that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Panel finds that the Complainant established such a prima facie case inter alia due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use its PORSCHE or PORSCHE DESIGN trademarks or a variation thereof. The Respondent did not provide any evidence to show any rights or legitimate interests in the disputed domain name. Thus, the Respondent did not rebut the Complainant’s prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests with respect to the disputed domain name.
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii) of the Policy.
The Complainant has submitted evidence, which shows that the Respondent registered the disputed domain name long after the Complainant registered its trademark. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant owns trademark rights in the PORSCHE mark that were registered as early as 1953 and in the PORSCHE DESIGN mark that were registered as early as 1980.
The Respondent’s bad faith is suggestive, in these particular circumstances, in which the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735).
Paragraph 4(b)(iv) of the Policy provides that it will be evidence of bad faith registration and use by a respondent, if by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to a 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 website or location or of a product or service on the website or location.
As determined earlier, the disputed domain name is confusingly similar to the Complainant’s trademarks. Previous UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (see Edmunds.com, Inc v. Triple E Holdings Limited, WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the Policy.
The Respondent’s use of the highly distinctive trademark, owned by the Complainant, within the disputed domain name is suggestive of the Respondent’s bad faith. It was held in previous UDRP decisions that it is presumptive that using a highly distinctive trademark with longstanding reputation is intended to make an impression of an association with the Complainant:
“By registering and using the Domain Name incorporating the well-known and well-established registered trademark SWAROVSKI, the effect is to mislead Internet users and consumers into thinking that the Respondent is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business; or that the Respondent’s activities are approved or endorsed by the Complainant. None of which the Panel can find, on the basis of the record, is, in fact, the situation. Such misleading consequences, in the view of the Panel, are indicative of bad faith on the part of the Respondent” (See Swarovski Aktiengesellschaft v. fan wu, WIPO Case No. D2012-0065).
Thus, it would have been pertinent for the Respondent to provide an explanation of its choice in the disputed domain name. However, the Respondent has chosen not to respond to the Complainant’s allegations in the Complaint. The failure to respond in this case, leads the Panel to conclude that the disputed domain name was registered and is being used by the Respondent in bad faith with the intent to create an impression of an association with the Complainant and its products and services, and profit thereof.
Indeed, “when a domain name is so obviously connected with a Complainant, its very use by a registrant with no connection to the Complainant suggests ‘opportunistic bad faith’” (Tata Sons Limited v. TATA Telecom Inc/Tata-telecom.com, Mr. Singh, WIPO Case No. D2009-0671).
The Complainant submitted evidence showing that the Respondent was using the disputed domain name to sell and promote third party goods, some of which are, on their face, identical or competitive to the goods being offered by the Complainant affiliates under an agreement with a third party. Such use was made while using false addresses in Florida, United States.
In the Panel’s view, using the disputed domain name to promote similar or identical goods to the goods being offered by the Complainant’s affiliate, without the approval or authority of the Complainant and without any disclosure as to the relationship (or lack thereof) between the Complainant and the Respondent, is clear evidence that the Respondent registered and is using the disputed domain name with knowledge of the Complainant and of the use the Complainant is making with its trademarks, and indicates that the Respondent’s primary intent with respect to the disputed domain name is to trade off the value thereof. The Respondent’s actions therefore constitute bad faith. See Herbalife International, Inc. v. Surinder S. Farmaha, WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the complainant’s trademark registration amounts to bad faith”.
In addition, in the Panel’s view, failing to provide accurate addresses while registering the disputed domain name further suggests bad faith registration and use on the part of the Respondent. The Complainant rightfully argues, in the Panel’s view, that failure to provide an accurate address would support a finding that the Respondent “intentionally attempted to attract, for commercial gain, Internet users to a website or other online locations, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.”
Finally, the Panel considers the addition of “de” possibly indicating the origin of the goods, to be from Germany, to be a further misleading element specifically selected in bad faith to mislead consumers and create a likelihood of confusion which will result in the diversion of Internet traffic to the disputed domain name, all for the commercial benefit of the Respondent.
Based on the evidence presented to the Panel, including the late registration of the disputed domain name, the distinctiveness of the Complainant’s trademark and the Respondent’s use of the disputed domain name, the Panel finds that the disputed domain name was registered and is being used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.
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 <porschedesignde.com> be transferred to the Complainant.
Jonathan Agmon
Sole Panelist
Date: October 27, 2013