Dr. Ing. h.c. F. Porsche Aktiengesellschaft v. David Juntunen / Top Gear Autoworks
Claim Number: FA1901001824774
Complainant is Dr. Ing. h.c. F. Porsche Aktiengesellschaft (“Complainant”), represented by Jana L. France of FisherBroyles, LLP, Minnesota, USA. Respondent is David Juntunen / Top Gear Autoworks (“Respondent”), represented by Chris Ritts of Ritts Associates, Minnesota, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <porscheofminneapolis.com> and <porscheminneapolis.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Michael A. Albert as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 11, 2019; the Forum received payment on January 11, 2019.
On January 15, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <porscheofminneapolis.com> and <porscheminneapolis.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 16, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 5, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@porscheofminneapolis.com, postmaster@porscheminneapolis.com. Also on January 16, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on January 21, 2019.
On January 28, 2019, Complainant filed an Additional Submission. On January 29, 2019, Respondent filed an Additional Submission.
On January 23, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Michael A. Albert as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant manufactures, markets, and sells throughout the world, fine automobiles, parts and accessories and other products in connection with the PORSCHE mark. Complainant has rights in the PORSCHE mark through its trademark registrations with the United States Patent and Trademark Office. The disputed domain names are confusingly similar to Complainant’s PORSCHE mark as they incorporate the mark in its entirety, with the geographic term “minneapolis,” the generic term “of,” and a “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interest in the disputed domain names. Respondent is not authorized, licensed, or otherwise permitted to use Complainant’s PORSCHE mark and is not commonly known by the disputed domain names. Complainant contends that the domain names resolve to websites that purport to belong to an authorized dealership of Complainant and offer goods and services that directly compete with Complainant’s business. Complainant argues that the websites give the false impression that they are affiliated with, and authorized by, Complainant.
Additionally, Respondent does not use the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain names to compete directly with Complainant.
Respondent registered and uses the disputed domain names in bad faith. Respondent has demonstrated a pattern of bad faith as it has registered other domain names incorporating famous, third-party marks. Additionally, Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, users to the disputed domain names where it purports to be a licensed dealership and offers competing goods and services. Finally, Respondent had actual and constructive knowledge of Complainant’s rights in the PORSCHE mark prior to registering and subsequent use of the disputed domain names.
B. Respondent
Respondent registered the disputed domain names on December 22, 2010 and March 39, 2010, respectively. Respondent does not use the disputed domain names in order to compete with or compromise Complainant’s business. Further, Respondent offered to sell the disputed domain names to Complainant for $25,000.00 in order to offset the cost to secure another domain name and build its site.
C. Additional Submissions
Complainant
Following the filing of the Complaint, Respondent offered to sell one or both of the disputed domain names to Complainant for $25,000, a sum Complainant believed to be substantially in excess of Respondent’s documented out-of-pocket costs directly related to the domain name, constituting further evidence of Respondent's bad faith registration. Complainant notes that Section 4(b)(i) of the Policy provides that a domain name is registered and used in bad faith if the registrant has registered or “acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant, which is the owner of the trademark or service mark, or to a competitor for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name."
Respondent
Respondent agreed that $20,000 [sic ] may be excessive and made another offer to sell the disputed domains names to Complainant as detailed below:
1. Respondent would retain the website content itself and be able to transfer that content to a new domain.
2. Respondent would be adequately compensated for the two domains and site before release of either. Respondent estimates the actual time and expense to be around $5000 for both domains.
3. Two named entities (presumably affiliated with Respondent) would be released from all litigation and Complainant would assume all associated costs.
Complainant holds trademark rights for the PORSCHE mark. Complainant’s first PORSCHE mark was registered on January 10, 1956. Complainant has owned and operated numerous domain names incorporating the PORSCHE mark, including <porsche.com> registered on November 7, 1996, <porschedealer.com> registered on March 24, 1996, <porschedriving.com> registered on November 29, 1999, and <porscheusa.com> registered on November 22, 2001.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant has shown that it has rights in the PORSCHE mark based upon registration of the mark with the USPTO (e.g., Reg. No. 618,933, registered June 28, 1956). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark).
Respondent’s <porscheofminneapolis.com> and <porscheminneapolis.com> domain names are confusingly similar to the PORSCHE mark, as the names incorporate the mark in its entirety with the addition of a geographic term “minneapolis,” a generic term “of,” and a “.com” gTLD. Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See Dell Inc. v. Suchada Phrasaeng, FA 1745812 (Forum Sep. 28, 2017) (“Adding geographical terms does not sufficiently distinguish a domain name from a mark to prevent a finding of confusing similarity under a Policy ¶4(a)(i) analysis.”); see also Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)). The Panel therefore finds that the disputed domain names are confusingly similar to the PORSCHE mark per Policy ¶ 4(a)(i).
Respondent has no rights or legitimate interests in the disputed domain names, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the PORSCHE mark in any way. Respondent’s lack of rights or legitimate interests in the disputed domain names is further demonstrated by its failure to use the names to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. The disputed domain names instead resolve to competing websites. Such use is not indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
The Panel therefore finds that Respondent does not have rights or legitimate interests in the <porscheofminneapolis.com> and <porscheminneapolis.com> domain names.
Complainant has shown that Respondent’s registration of the disputed domain names is part of a pattern of bad faith registration and use of domain names. A pattern of bad faith registration can be established by a showing of the respondent’s registration of other domain names infringing on famous marks, and such a pattern can indicate bad faith per Policy ¶ 4(b)(ii). See Blue Diamond Growers v. L Wood, FA 1464477 (Forum June 7, 2017) (finding evidence that the respondent had previously registered domain names infringing on famous third-party marks established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii)).
Respondent’s use of the disputed domain names to purport to be a dealership for Complainant in order to compete with Complainant’s business demonstrates that Respondent registered and used the domain names in bad faith. Use of a domain name to create a false impression of affiliation with a complainant in order to compete with and disrupt the complainant’s business is behavior indicative of bad faith registration and use per Policy ¶¶ 4(b)(iii) and (iv). See Fitness International, LLC v. ALISTAIR SWODECK / VICTOR AND MURRAY, FA1506001623644 (Forum July 9, 2015) (“Respondent uses the at-issue domain name to operate a website that purports to offer health club related services such as fitness experts, fitness models, fitness venues, exercise programs, and personal training, all of which are the exact services offered by Complainant. Doing so causes customer confusion, disrupts Complainant’s business, and demonstrates Respondent’s bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iii).”); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003).
Also in light of the fame and notoriety of Complainant's PORSCHE mark, it is inconceivable that Respondent registered the <porscheofminneapolis.com> and <porscheminneapolis.com> domain names without actual and constructive knowledge of Complainant's rights in the mark.
Respondent’s proposal to sell the disputed domain names for sums in excess of its confirmed expenses further supports the Panel’s conclusion, on the facts of this case, that Respondent registered the domain names in violation of Policy ¶ 4(b)(i). For these reasons, the Panel finds that Respondent has registered and used the disputed domain name in bad faith pursuant to Paragraphs 4(b)(i) and 4(b)(iii) of the Policy.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <porscheofminneapolis.com> and <porscheminneapolis.com> domain names be TRANSFERRED from Respondent to Complainant.
Michael A. Albert, Panelist
Dated: February 7, 2019
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