Westmore · UDRP DecisionCayennesex.com
The Panel found <cayennesex.com> confusingly similar to the Complainant’s CAYENNE mark but held that the Complainant failed to establish the Respondent’s lack of rights or legitimate interests. The combination of “cayenne” and “sex” was found capable of creatively describing the escort services offered before notice of the dispute, using the culturally suggestive “hot” or “spicy” meaning of cayenne. The Panel also found evidence suggesting that the Respondent had been known as “Cayenne” in providing those services. Because the second UDRP element was not established, the Panel did not reach bad faith and denied the Complaint.
The timeline behind cayennesex.com
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
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This decision illustrates that incorporating a trademark into a domain may satisfy confusing similarity while still leaving the complainant unable to prove lack of rights or legitimate interests. Where a trademark term also has a dictionary or culturally suggestive meaning connected to the respondent’s actual pre-dispute services, a panel may distinguish descriptive or evocative use from trademark targeting. A respondent’s default does not remove the complainant’s burden of proof.
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. PrivateName Services Inc. / Veronica Gruenberger Case No. D2019-0970 1. The Parties 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 PrivateName Services Inc., Canada / Veronica Gruenberger, Austria. 2. The Domain Name and Registrar The disputed domain name <cayennesex.com> (the “Disputed Domain Name”) is registered with World4You Internet Services GmbH (the “Registrar”). 3. Procedural History The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on April 29, 2019. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 30, 2019, the Registrar transmitted by email to the Center its verification response confirming that the language of the registration agreement is in German and disclosing the registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. On May 1, 2019, the Center sent a communication to the Parties, in English and German, regarding the language of the proceeding and provided the registrant and contact information disclosed by the Registrar, inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 3, 2019, in which it 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 amended 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 of the Complaint, and the proceedings commenced on May 24, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 13, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 17, 2019. The Center appointed John Swinson as the sole panelist in this matter on June 25, 2019. 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 Dr. Ing. h.c. F.Porsche AG, a company incorporated in Germany. The Complainant has been a maker of sports cars for more than 70 years. According to the Complaint, the “Cayenne” car model is the Complainant’s best-selling model, and is one of the most successful sports utility vehicles worldwide in the luxury car segment. The Complainant owns a number of registered trade marks for CAYENNE (the “Trade Mark”) in various jurisdictions, including in the European Union and Canada, the earliest of which being Canadian trademark registration TMA591644, filed on September 10, 1999, and registered on October 6, 2003; and European Union trademark registration 1387133, filed on November 17, 1999, and registered on February 2, 2001. The Respondent is Veronica Gruenberger, an individual of Austria. The Respondent did not file a response, and consequently little information is known about the Respondent. The Disputed Domain Name was registered on March 20, 2018, through PrivateName Services Inc. According to the Complainant, before notice of the dispute, the Respondent offered escort services via a website at the Disputed Domain Name. At present, the Disputed Domain Name does not resolve to an active website. 5. Parties’ Contentions A. Complainant The Complainant makes the following submissions. Identical or Confusingly Similar The Disputed Domain Name incorporates the Trade Mark in its entirety. The addition of the generic term “sex” is merely descriptive of the services provided by an escort, and does not diminish the risk of confusion. Rights or Legitimate Interests The Respondent does not have any rights or legitimate interests in the Disputed Domain Name because: - The Respondent is not commonly known by the Disputed Domain Name. - The Respondent has not been making a legitimate noncommercial or fair use of the Disputed Domain Name. Rather, the Respondent is using the Disputed Domain Name to unfairly commercially benefit from the marketing efforts of the Complainant, and attempts to trade off the reputation and fame of the Trade Mark. This tarnishes the reputation of the Complainant. This is illustrated by the prominent slogan at the top of the website previously at the Disputed Domain Name (translated from German into English): “CAYENNE HIGH CLASS ESCORT HOT LIKE THE PORSCHE & SPICY LIKE THE CHILLI PEPPER!!!” - The commercial nature of the Respondent’s use of the Disputed Domain Name is evidenced by the provision of a price list for the Respondent’s services. - There is not and has never been a business relationship between the Parties. The Complainant has not licensed or otherwise allowed the Respondent to use the Trade Mark. - The current non-use of the Disputed Domain Name cannot constitute a legitimate interest. Registered and Used in Bad Faith The Disputed Domain Name is used in bad faith because the Respondent deliberately and without fair cause tried to take advantage of the good reputation and fame of the Trade Mark. The Respondent is holding the Disputed Domain Name without using it. Further, the Respondent is trying to evade prosecution by concealing her identity through a privacy service. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Language of the Proceeding The Complaint was submitted in English, however, the Registrar confirmed that the language of the registration agreement is German. Paragraph 11(a) of the Rules provides that “[u]nless 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 Panel finds that the language of the proceeding should be English for the following reasons: - the Complainant requested English to be the language of the proceeding; - the Center sent all the communications in both languages, German and English; - the Disputed Domain Name is comprised of English words; - the Respondent did not object to English being the language of the proceedings. 6.2 Substantive Matters To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely: (i) the Disputed Domain Name is identical or confusingly similar to a trade mark 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. The onus of proving these elements is on the Complainant even though the Respondent failed to submit a response. A. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark. The Disputed Domain Name incorporates the entirety of the Trade Mark, with the addition of the word “sex”. Where the relevant trade mark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) do not prevent a finding of confusing similarity under the first element (see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). In this case the term “sex” does not dispel such similarity, as it is a term used to describe the services previously being offered by the Respondent at the Disputed Domain Name. The Panel is satisfied that the Complainant has rights in the Trade Mark by virtue of its ownership and use of the Trade Mark. In light of the above, the Complainant succeeds on the first element of the Policy. B. Rights or Legitimate Interests Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests. Under paragraph 4(c)(i) of the Policy, the Respondent will have rights to or legitimate interests in the Disputed Domain Name if, before any notice of the dispute, the Respondent had used or made demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services. The Complainant submits that the Respondent registered the Disputed Domain Name to advertise escort services as a pretext to unfairly commercially benefit from the Complainant’s reputation, and to tarnish the Trade Mark. According to the Complaint, this is illustrated by the “prominent slogan” featured at the top of the website previously at the Disputed Domain Name: “CAYENNE HIGH CLASS ESCORT HOT LIKE THE PORSCHE & SPICY LIKE THE CHILLI PEPPER!!!” This is the only evidence provided by the Complainant that the Respondent is targeting the Trade Mark or the Complainant or attempting to trade off its reputation. The Panel notes that, while the term “cayenne” is indeed a trade mark owned by the Complainant, perhaps even a well-known or famous one, it is also a type of chilli pepper which is known for being particularly hot or spicy. (It is even apparently believed by some that the aphrodisiac power of hot chilli peppers can be somewhat amazing.) The Respondent has registered a domain name comprised of two dictionary terms which, while also invoking the Complainant’s trade mark, can be interpreted as suggestive of libido: “cayenne” and “sex”. However, the use of generic or non-distinctive terms in the Disputed Domain Name does not automatically confer rights or legitimate interests on the Respondent. According to the WIPO Overview 3.0 , panels will find that a respondent has rights or legitimate interests in a domain name based on a dictionary or non-distinctive term where the domain name is genuinely used, or at least demonstrably intended for such use, in connection with the relied-upon dictionary meaning and not to trade off third-party trade mark rights (see WIPO Overview 3.0 , section 2.10.1 ). In this case, the Respondent did not and does not use the term “cayenne” in the Disputed Domain Name directly in connection with its dictionary meaning, but does so by reference to a perhaps more cultural connotation. For example, the website at the Disputed Domain Name does not relate to food or cooking. However, the Respondent does use the term “cayenne” in connection with its more suggestive meaning. According to WebMD, “[s]picy foods have long been considered to be sexual stimulants. There is some scientific truth to this claim in that foods that are heavily spiced often contain capsaicin, the active ingredient in cayenne pepper” (see https://www.webmd.com/sex-relationships/features/want-better-sex#1). The Panel does not consider that the Respondent’s single reference to the Complainant on the website previously at the Disputed Domain Name means that the Respondent used the term “cayenne” or registered the Disputed Domain Name to trade off the reputation of the Trade Mark. In the Panel’s view, the Complainant’s submissions fail to adequately demonstrate that the Respondent is using the Trade Mark to unfairly commercially benefit from the Complainant’s reputation and marketing efforts as opposed to its culturally suggestive meaning. There is no similarity in products or services offered by the Complainant and the Respondent. In fact, the website previously at the Disputed Domain Name makes no other reference to or suggestion of cars of any description. It would be clear to Internet users visiting the website at the Disputed Domain Name that it is not operated by or affiliated with the Complainant. As such, the Panel considers that there is a low risk of implied affiliation or tarnishment. The dictionary term “sex” is descriptive of the escort services which were previously offered via the website at the Disputed Domain Name. (The Panel makes no comment on their broader legality). In conjunction with the term “cayenne”, the Disputed Domain Name creatively describes the services which were offered by the Respondent via the website at the Disputed Domain Name (for example, “hot” or “spicy” sex or escort services). The Respondent offered such services prior to notice of the dispute. In the Panel’s view, this is sufficient to defend a claim of lack of rights or legitimates in respect of the Disputed Domain Name. Further, under paragraph 4(c)(ii) of the Policy, a respondent will have rights to or legitimate interests in a disputed domain name if she has been commonly known by the disputed domain name, even if she has acquired no trade mark or service mark rights. Based on copies of the website previously at the Disputed Domain Name, there is evidence to suggest the Respondent has been commonly known by the name “Cayenne” in the provision of her escort services. If the Respondent is commonly known as “Cayenne”, this would also defend a claim of lack of rights and legitimate interests in the Disputed Domain Name. The Panel finds the Complainant does not succeed in establishing the second element of the Policy. C. Registered and Used in Bad Faith Since the Complainant has failed to establish the second element of the Policy, it is not necessary for the Panel to reach a finding on the third element. 7. Decision For the foregoing reasons, the Complaint is denied. John Swinson Sole Panelist Date: July 9, 2019
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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