Dr. Ing. h.c. F. Porsche AG v. Interactiv Corporation
Claim Number: FA1407001571774
Complainant: Dr. Ing. h.c. F. Porsche AG of Stuttgart, Germany.
Complainant Representative: Lichtenstein, Körner and Partners of Stuttgart, Unknown, Germany.
Respondent: Interactiv Corporation of San Jose, California, United States of America.
Interactiv Corporation of San Jose, California, US.
REGISTRY and REGISTRAR
Registry: United TLD Holdco Ltd.
Registrar: Name.com, Inc.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Examiners in this proceeding.
Petter Rindforth, as Examiner (Chair)
Jeffrey M. Samuels, as Examiner
Douglas M. Isenberg, as Examiner
Complainant submitted a Complaint on July 26, 2014.
Respondent filed a Response on August 14, 2014.
On August 18, 2014, the Examiner ordered the domain name <porsche.social> to be returned to the control of Respondent.
Complainant filed an appeal on August 27, 2014.
Respondent has not formally responded.
The Examiners note that, as Complainant has chosen to appeal without submitting any new documents/material, the case is to be decided as originally presented by the Complainant on July 26, 2014 and responded by Respondent on August 14, 2014.
Having reviewed the communications records, the Examiner finds that the National Arbitration Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules") .
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
Findings of Fact:
The Complainant is the owner of the trademark PORSCHE, registered in a number of countries/regions, such as:
U.S. Trademark registration No. 0618933 PORSCHE, registered on January 10, 1956 in respect of “automobiles and parts thereof”
International Trademark Registration No 179928, registered on October 8, 1954 in respect of goods in Intl Classes 7, 8, 12
International Trademark Registration No 562572 PORSCHE, registered on October 27, 1990 in respect of goods and services in Intl Classes 12 and 42
Community Trademark Registration No 000073098 PORSCHE, registered on December 12, 2000 in respect of goods in Intl Class 12
The Complainant has provided evidence of use by screenshots from the website www.porsche.com.
The Respondent, an Internet Service Provider, deny all of Complainant’s allegations.
URS Procedure 1.2.6, requires Complainant to prove, by clear and convincing evidence, each of the following three elements to obtain an order that a domain name should be suspended.
Legal Findings and Conclusion:
IDENTICAL OR CONFUSINGLY SIMILAR
The Complainant met the standard sets out in 1.2.6.1. of the URS Procedure since the Complainant has proved its right to the valid US Trademark Registration No. 618933 PORSCHE. Further, the Complainant has proved that the said trademark is in current use by presenting printouts of the Complainant’s website.
The relevant part of the disputed domain name is <porsche>, as the added top-level domain – being a required element of every domain name – is generally irrelevant when assessing whether or not a mark is identical or confusingly similar and in this case does nothing to distinguish the disputed domain name from the Complainant’s trademark. The meaning of the connected top level domain will however be further discussed below in relation to 1.2.6.2 of the URS.
The Examiners conclude that the disputed domain name is identical or confusingly similar to the Complainant's trademark PORSCHE.
NO RIGHTS OR LEGITIMATE INTERESTS
The Respondent does not have any rights in <porsche.social>, as the Complainant has not authorized the Respondent to register a domain name containing its registered and used trademark PORSCHE, nor is the Respondent commonly known by <porsche.social>.
The question remains whether the Complainant has shown that the Respondent has no legitimate interests in the disputed domain name.
<porsche.social> indicates that it relates to a social networking service. The Respondent informs that Respondent is an Internet Service provider, and has numerous products and services, such as “web design and development, hosting solutions, ecommerce, and more”.
The “ecommerce” part of the Respondent’s business is in fact shown by Respondent’s “parking web site” (printout provided by the Respondent), with links to other sites related to the Complainant’s trademark and products, as well as clear “Sponsored Listings” selling goods not related to the Complainant’s trademark and products.
The Respondent denies to have actively created the site with the links and advertisements, and claims to have no commercial activities. However, as clearly stated in several UDRP cases, use of a domain name to post parking and landing pages or PPC links does not of itself confer rights or legitimate interests arising from a "bona fide offering of goods or services" or from "legitimate noncommercial or fair use" of the domain name, especially where resulting in a connection to goods or services competitive with those of the rights holder. By contrast, such use - as in this case – is a clear indication of unfair use resulting in misleading diversion. As a domain holder is always responsible for how the specific domain name is used, the Respondent cannot deny any responsibility of such use of <porsche.social>.
Accordingly, the Examiners find that the Complainant has established that the Respondent has no rights or legitimate interests in <porsche.social>.
BAD FAITH REGISTRATION AND USE
The Respondent informs that the intention of registering the disputed domain name was to use it for a “free community to Porsche car enthusiast”. Accordingly, the Examiners conclude that the Respondent had clear knowledge of the Complainants prior and active trademark rights at the time the disputed domain name was registered.
As the Respondent has then used <porsche.social> for a commercial web site with advertisements and commercial links, some related to the goods and services of the Complainant, the Examiners also finds that the Respondent is using <porsche.social> in bad faith.
After reviewing the parties’ submissions, the Examiners determine that
the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiners hereby Order the following domain name be SUSPENDED for the duration of the registration:
<porsche.social>
Petter Rindforth, as Examiner (Chair)
Jeffrey M. Samuels, as Examiner
Douglas M. Isenberg, as Examiner
Dated: September 10, 2014
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