Westmore · UDRP DecisionPorscheyellowpages.com
The Panel ordered transfer of <porscheyellowpages.com>. It found the domain confusingly similar to the Complainant’s PORSCHE mark because it incorporated the mark in full and added only the term “yellowpages.” The Complainant established a prima facie case that the Respondent lacked rights or legitimate interests, which the non-responding Respondent did not rebut. Bad faith was established through a pattern of automobile-mark domain registrations and use of the domain for a commercial directory presented in a manner likely to suggest authorization by the Complainant and collaboration with the operators of “www.yell.com.”
The timeline behind porscheyellowpages.com
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
Westmore reconstructs the full history behind porscheyellowpages.com — from public RDAP and the Internet Archive — as part of UDRP Intelligence:
The decision illustrates how a trademark combined with a directory term can heighten, rather than reduce, confusion when the resulting domain suggests an official dealer directory. It also shows the combined evidentiary force of website presentation, a portfolio of similarly structured automotive domains, and a prior adverse UDRP decision involving the same respondent.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Dr. Ing. h.c. F. Porsche AG v. Auto Media Holdings Case No. D2014-0567 1. The Parties The Complainant is Dr. Ing. h.c. F. Porsche AG of Stuttgart, Germany, represented by Lichtenstein, Körner & Partners, Germany. The Respondent is Auto Media Holdings of Las Vegas, Nevada, United States of America (“US”). 2. The Domain Name and Registrar The disputed domain name <porscheyellowpages.com> is registered with GoDaddy.com, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 8, 2014. On April 8, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 9, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On April 14, 2014, due to an administrative deficiency in the Complaint, the Center transmitted a request to amend the Complaint to the Complainant by email. On April 17, 2014, the Complainant submitted an amendment to the Complaint to the Center by email. 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 April 22, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 12, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 13, 2014. The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on May 21, 2014. 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 The Complainant is the well-known manufacturer of sports cars. The Complainant has a history of more than 70 years’ standing and its trade name “Porsche” and the PORSCHE trademark which it applies to its motor vehicles are known worldwide. The Complainant’s PORSCHE trademark is protected by registrations in most countries. In the jurisdiction where the Respondent is based, the PORSCHE trademark is protected inter alia by US registered trademark no. 618933 for the word mark PORSCHE registered on January 10, 1956 in international class 12. According to WhoIs records, the disputed domain name was created on June 6, 2007. The Respondent is an entity with a contact address in Las Vegas, Nevada, US. The website associated with the disputed domain name has the appearance of an online directory in the style of that published at “www.yell.com”. In particular, the said website bears a logo which is almost identical to the walking fingers device featured on the website at “www.yell.com”. The home page of the website associated with the disputed domain name states that it offers “The Nation’s Porsche Dealers All Under One Roof”. The said website features a drop down menu listing a series of domain names containing the names of some 29 other vehicle manufacturers, each coupled with the term “yellowpages”. The Respondent is listed as the respondent in Rolls-Royce Motor Cars Limited v. Auto Media Holdings, WIPO Case No. D2010-0421 . That case related to the domain name <rollsroyceinventory.com>, which the panel ordered to be transferred to the complainant. The panel noted that the website associated with <rollsroyceinventory.com> offered that domain name for sale in addition to over 25 other domain names incorporating well-known automobile trademarks. The panel also noted that the said website showed that respondent was a seller of domain names and was not involved in the sale or resale of automobiles or parts for automobiles. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain name is confusingly similar to a trademark in which it owns rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith. The Complainant states that the disputed domain name contains its PORSCHE trademark together with a descriptive element “yellowpages”, which it says indicates an official directory of dealers in the Complainant’s cars. The Complainant asserts that the Respondent has made no use of the disputed domain name, nor any preparations to use it, in connection with a bona fide offering of goods and services. The Complainant states that there is not and has never been a business relationship between the Parties and asserts that the Respondent is not commonly known by the disputed domain name. The Complainant states that the Respondent is not making a noncommercial use of the disputed domain name. The Complainant contends that the Respondent has registered the disputed domain name in order to prevent the Complainant from reflecting its mark in a corresponding domain name and has engaged in a pattern of such conduct. The Complainant notes that the Respondent’s website has the appearance of an officially authorized directory approved by the Complainant or operated by the Complainant in conjunction with the owner of the “www.yell.com” website. The Complainant submits that the Respondent is benefitting by misleading the public in order to advertise a commercial business directory. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Panel notes that the disputed domain name contains the Complainant’s PORSCHE trademark in its entirety together with the term “yellowpages”. The Panel is satisfied that the addition of the latter term to the Complainant’s highly distinctive trademark within the disputed domain name does nothing to distinguish the disputed domain name from the said trademark which remains the primary and clearly identifiable element therein. In these circumstances, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in a domain name: “Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii): (i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”. The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case that the respondent has no rights or legitimate interests in the disputed domain name. Once such prima facie case is made, the respondent carries the burden of demonstrating such rights or legitimate interests. In the present matter, the Panel is satisfied that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name based upon its submissions that the Respondent has not used the disputed domain name in connection with a bona fide offering of goods and services, that there is no business relationship between the Parties and that the Respondent is not commonly known by or making a noncommercial use of the disputed domain name. The burden of production therefore shifts to the Respondent to bring forward suitable evidence of such rights or legitimate interests. By failing to file a response in this case, the Respondent has chosen not to explain its conduct or to set out evidence of any rights or legitimate interests which it might claim in connection with the disputed domain name and thus has failed to rebut the prima facie case made by the Complainant. In considering the evidence on the present record, and in particular the fact that the Respondent appears to be using the disputed domain name, without the permission of the Complainant, to create the impression of a directory site that is officially sanctioned by the Complainant and delivered to the public by the operators of the “www.yell.com” directory, the Panel has been unable to identify any conceivable rights or legitimate interests which the Respondent might have claimed in the disputed domain name. In the above circumstances, the Panel finds that the Complainant has proved that the Respondent has no rights or legitimate interests in the disputed domain name and accordingly that the second element under the Policy has been established. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: “(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or (ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.” In the present case, the Complainant focuses initially on paragraph 4(b)(ii) of the Policy by contending that the Respondent has engaged in a pattern of conduct of registering domain names, including the disputed domain name, which prevents the owner of a trademark from reflecting that mark in a corresponding domain name. Given the volume of domain names featured in the Complaint, each of which contains the name of a vehicle manufacturer as its primary element, taken together with the domain name in Rolls-Royce Motor Cars Limited v. Auto Media Holdings, WIPO Case No. D2010-0421 , supra, the Panel considers, in the absence of an explanation by the Respondent, that the Complainant’s contention is sound. Secondly, the Complainant makes a submission in terms of paragraph 4(b)(iv) of the Policy that the Respondent is intentionally using the disputed domain name to attract Internet users to its website, for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship or endorsement of the Respondent’s website. The Panel is satisfied that the disputed domain name has been intentionally created to produce the impression in the minds of the public that the associated website is officially sanctioned by the Complainant as a directory site. The use of the term “Yellow Pages” on that site and in the disputed domain name, together with content featuring a very similar logo to that used on “www.yell.com” only serves in the Panel’s mind to exacerbate the likelihood of confusion. The Panel therefore accepts the Complainant’s contention that the Respondent’s website will most probably be seen by a significant proportion of the public as some form of commercial joint venture, partnership or other authorized collaboration between the Complainant and the operators of “www.yell.com” and thus that there is a considerable likelihood of confusion with the Complainant’s mark. The Respondent has failed to answer the Complainant’s submissions in terms of paragraphs 4(b)(ii) and 4(b)(iv) of the Policy and the Panel cannot identify on the present record any argument that the Respondent might have made which would have caused the Panel to consider that the Respondent had any good faith motivation regarding the registration and use of the disputed domain name. In all of the above circumstances, the Panel finds on the balance of probabilities that the Respondent has registered and used the disputed domain name 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 <porscheyellowpages.com> be transferred to the Complainant. Andrew D. S. Lothian Sole Panelist Date: June 4, 2014
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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