WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Dr. Ing. h.c. F. Porsche AG v. La Serra Srl

Case No. D2020-2461

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 La Serra Srl, Italy, represented internally.

2. The Domain Name and Registrar

The disputed domain name <myporsche.com> (the “Domain Name”) is registered with Internet Domain Service BS Corp (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 23, 2020. On September 23, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 24, 2020, 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 for the Domain Name.

The Center verified that 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 28, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 18, 2020. The Response was filed with the Center on October 22, 2020.

The Respondent filed a signed Standard Settlement Form with the Response. The Center informed the Complainant of the possibility of suspending the proceeding to explore settlement options on October 22, 2020. The Complainant requested that the proceeding be suspended on October 28, 2020, and the Center sent a Notification of Suspension with the due date November 27, 2020. The proceeding was reinstituted on November 26, 2020, per the Complainant’s request.

The Center appointed W. Scott Blackmer as the sole panelist in this matter on December 1, 2020. The Panel finds that it was properly constituted. The Panel submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

On December 21, 2020, the Center sent the parties Panel Order Number 1, (a) asking the Respondent to furnish evidence of its asserted plans before the UDRP dispute to use the Domain Name for a noncommercial fan site and (b) asking the Complainant to submit evidence that the Domain Name was under the control of the Respondent in November 2002 when it was advertised for sale. The parties responded, as requested, by December 27, 2020. The Complainant submitted a further supplemental filing on January 12, 2021.

4. Factual Background

The Complainant is an automobile manufacturer headquartered in Stuttgart, Germany. It is organized as a stock corporation and owned by Volkswagen AG. The Complainant has been a manufacturer of sports cars for more than 70 years, using "Porsche" as the prominent and distinctive part of its trade name. Porsche automobiles are distributed worldwide through a group of international companies, each responsible for a certain region. The cars are sold and leased through a network of Porsche Centres and advertised online as well as in print and broadcast media. The Complainant operates websites and social media sites incorporating the PORSCHE mark, including “www.porsche.com” (a domain name first registered in 1996), with special sections devoted to national or regional audiences, including Germany, Italy, and North America. There is also a special section labelled “My Porsche" on the Complainant's website, where owners can, for example, track their maintenance appointments and safety updates.

The Complainant holds numerous registered trademarks consisting of, or incorporating, the “Porsche” name, including the following:

The Registrar reports that the Domain Name was created on January 22, 2002 and is registered in the name “Not Disclosed” of the Respondent organization La Serra Srl, with a postal address in Livorno, Italy.

Eraldo Genovese, who identifies himself as the CEO of La Serra Srl, submitted a Response on behalf of the Respondent, including documentation showing that the Respondent is an Italian limited liability company registered since 2010 in the Tuscan district of Maremma and Tirenno. The company registration lists the Respondent’s principal business as the wholesale purchase and sale of new and used automobiles. The Response indicates that Mr. Genovese gave his personal residence address in registering the Domain Name. The Panel notes that the Response was sent by email from the same domain used for the Gesicar website, the website of a car dealership in Livorno, Italy primarily advertising new and used PORSCHE automobiles, where Mr. Genovese is shown as the “CEO and owner”.

The Complaint attaches a screenshot from the Internet Archive’s Wayback Machine, dated November 26, 2002, showing that the Domain Name resolved at that time to a web page of NameGiant.com advertising the Domain Name for sale and inviting communications for a “free quote”. Subsequent screen captures submitted by the Complainant in response to the Panel Order show that the Domain Name resolved to error messages or server tests. There is no evidence that the Domain Name was used for an active website.

The Response states the Respondent acquired the Domain Name in 2016 with the intent of creating what might be called a “fan site” for PORSCHE car owners. The Response asserts the Respondent’s willingness to transfer the Domain Name:

“The Respondent is a true passionate of the vehicles and has not an intent to dispute after a domain name with the Porsche factory. His vision can still come to existence by using another domain name. So he is available to accept to transfer the domain name as stated and agreed in the Standard Settlement Agreement form and to simply not profit from the transfer and to just cover all the costs that has incurred in the purchase and maintenance.”

The Complainant attaches correspondence showing that the Respondent offered to sell the Domain Name to the Complainant for EUR 6700 after this dispute arose, which the Complainant declined. As noted above, this proceeding was suspended temporarily to allow the Parties an opportunity to come to such an accord, but they have not reached an agreement.

In response to the Panel Order, the Respondent supplied a copy of the Respondent’s 2010 company registration showing Mr. Genovese as the legal representative and majority owner of the company when it was formed, as well as emails from February and March 2016 with the seller and escrow company concerning Mr. Genovese’s purchase of the Domain Name. In one email the previous registrant, an individual in the United States of America, asked Mr. Genovese, “How will you use the domain name?’’ Mr. Genovese replied, “Honestly it is not clear at the moment what will be the use, probably a site of fans of Porsche.”

The Respondent also furnished in response to the Panel Order a “vision” of the home page for the proposed fan site, showing a photo of a PORSCHE automobile and the title, “an indipendent [sic] place for sharing your passion for your porsche”, but this is not dated before the current proceeding. More to the point, the Respondent supplied copies of handwritten meeting notes in Italian of a dozen meetings, from November 2018 through December 2019. These meeting notes each record the attendance of four to six participants and chart the “path” (percorso) for developing a fan site, with appropriate plans such as choosing a technology partner and getting cost quotations, defining a budget for site maintenance, setting standards for photos and memberships, organizing a first tour in 2020, contemplating a physical “clubhouse”, finding sources of financial contributions, establishing a nonprofit organization with membership fees, and considering fundraisers including the sale of labelled merchandise such as T-shirts.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the Domain Name is identical or confusingly similar to its registered PORSCHE trademarks, which the Respondent has neither permission nor other rights or legitimate interests to use as a domain name.

The Complainant infers bad faith on the part of the Respondent, given the worldwide recognition of the Complainant’s mark, the Respondent’s efforts to obscure its identity, and the lack of any positive use of the Domain Name. The Complainant cites the “passive holding” doctrine:

“Against this background, the Respondent is — at least — engaged in bad faith passive holding of the disputed domain name in the sense of ‘WIPO Overview 3.0’ (see Section 3.3) and of paragraph 4(b) in particular with regard to the fact that (i) the Complainant's name and marks are world-famous and have a strong reputation, (ii) the true identity of the domain holder is concealed and (iii) any good faith use of the disputed domain name is absolutely implausible (cf. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, <telstra.org>; Dr. Ing. h.c. F. Porsche AG v. Privacydotlink Customer 3692605 / Carlos Fuentes, WIPO Case No. D2018-2456 <porschedallas.com>; Dr. Ing. h.c. F. Porsche AG v. Alexandre Cruz, WIPO Case No. D2017-1847 <porschecloud.com>; Dr. Ing. h.c. F. Porsche AG v. Harun Hussain, WIPO Case No. D2017-1652 <porschemiddlesbrough.com> etc.).”

The Complainant argues that the Respondent, being in the business of selling PORSCHES, must have intended a commercial use of the Domain Name from the outset (January 2002, according to the Complainant, when the Domain Name was created) or contemplated selling it to the Complainant for an amount in excess of out-of-pocket costs. This would represent bad-faith targeting of a well-known trademark. The Complainant also argues that the Response should be rejected as untimely filed and contends that the Respondent’s meeting notes submitted in reply to the Panel Order were clearly fabricated and should not be credited.

B. Respondent

The Respondent explains that “[t]he domain has been purchased by the present owner in 2016 with the only idea plan to develop a no commercial forum of citizens where passionate owners of a vehicle can share his story about his relationship (thoughts, photos, special moments, ect) with his porsche vehicle. There are still different variations to be decided between the group of porsche’s owner who are participating in the project but this is the general idea.”

The Respondent, which is not represented by legal counsel, suggests alternatively that “Porsche” has become a generic term, or that it is necessary to make nominative fair use of the mark for a contemplated website where individuals could discuss their own PORSCHE cars, or that in any event there is no possible harm to the Complainant as the Domain Name has not yet been put to use:

“Porsche is not only a Brand but, after 70 years, it is as well become a generic word used by humans to identify and talk about their own vehicle and couldn’t be talked about without using the generic word Porsche.

So far the domain name has never been used so it couldn’t confuse anyone and it couldn’t constitute any challenge to any mark rights.

Until myporsche.com will be online there is zero possibility to challenge anyone or create any confusion to anybody whatsoever.

The generic name porsche is used all over the web from passionate owners, porsche specialists and in forums just to mention few very old examples present on web:

https://www.jzmporsche.com/

- https://jasmine-porschalink.co.uk/about-us/

- https://mobileporschespecialist.com/

- https://www.jgcporsche.co.uk/

Of course to indicate the vehicle we need to use the generic word Porsche which cannot be indicated in any different name.”

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:

(i) the 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 domain name; and

(iii) the domain name has been registered and is being used in bad faith.

Under paragraph 15(a) of the Rules, “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

6,1 Preliminary Matters

A. Late Response

The Complainant asks the Panel to reject the Response because it was submitted four days after the deadline. The Panel notes that the Respondent, which is not represented by counsel, requested an extension at the end of the period for the Response because the Respondent claimed difficulty reading the Complaint, and then went forward with submitting the Response.

The Panel does not find that this minor delay caused prejudice to the Complainant. The Domain Name has been in existence for nineteen years. It is not being used for an active website. The Panel will consider the Response in the proceeding.

B. Supplemental Filings

Neither the Rules nor the Supplemental Rules make provision for supplemental filings, except at the request of the panel (see Rules, paragraph 12). Both parties submitted filings in response to the Panel Order, and the Complainant then made an additional submission in reply to the Respondent’s submission. As this was in response to newly furnished evidence and before the decision issued, the Panel will take this submission into account. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.6.

6.2 Substantive Matters

A. Identical or Confusingly Similar

The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the domain name”. See WIPO Overview 3.0, section 1.7.

The Complainant indisputably holds registered PORSCHE trademarks, as word marks or as figurative marks with those letters in a stylized form. The Panel finds that the Domain Name is confusingly similar to those marks, adding only the English possessive pronoun “my”, which does not avoid a finding of confusing similarity. As usual, the generic Top-Level Domain (“gTLD”) “.com” is disregarded as a standard registration requirement. See WIPO Overview 3.0, section 1.11.2.

The Respondent suggests that the term “Porsche” has lost trademark protection in at least some contexts, becoming a “generic” term. The phenomenon sometimes called “genericide” occurs when a well-known trademark enters into common usage as the descriptive name of a generic class of goods or services. Trademark offices or courts have declined protection for trademarks such as ASPIRIN, SELLOTAPE, and THERMOS in some countries when they determined that the marks had lost their character as brand names distinguishing a trademark holder’s product; in common speech, people came to use the name to refer to similar products from any manufacturer. But the Respondent offers no evidence that such a phenomenon is occurring with PORSCHE, which would require showing, for example, that sporty cars of other marques are being called “porsches” by members of the public. Instead, undercutting his own claim (such as it is) the Respondent speaks of the need for PORSCHE owners to use the mark in referring to the PORSCHE cars they own and enjoy. That is not a “generic” use of the term; far from it. Instead, it is an issue of claimed “nominative fair use” of the PORSCHE trademark, which is discussed in the next section of the Decision.

The Panel concludes that the Complainant has established the first element of the Complaint.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the respondent may establish rights or legitimate interests in the domain name, by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s 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) that the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is 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.

Because a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1. The Complainant in this proceeding has demonstrated trademark rights, the lack of permissive use on the part of the Respondent, and the absence of a relevant website associated with the Domain Name, thus shifting the burden of production to the Respondent.

The Respondent claims a legitimate interest essentially for nominative fair use, to employ the Complainant’s mark in the Domain Name for a contemplated noncommercial “fan site” for PORSCHE car owners. See WIPO Overview 3.0, section 2.7. As the Respondent points out, it is hard to have a conversation about PORSCHE cars without using the term “PORSCHE”. However, WIPO UDRP panels have analyzed the fair use issues in this context as follows:

“As with criticism sites discussed above, for purposes of assessing fair use under UDRP paragraph 4(c)(iii), a respondent’s fan site must be active, genuinely noncommercial, and clearly distinct from any official complainant site.” Id., section 2.7.1.

There is no active site in this case, although by the Respondent’s account the Respondent has had the Domain Name since 2016, with the intention of mounting a fan site. The Respondent’s plans for such a site are discussed in the following section on bad faith; paragraph 4(c)(iii) requires actual use to establish a legitimate interest for noncommercial purposes. On its face however, there could be difficulty, at least initially, distinguishing such a site from the Complainant’s, because the composition of the Domain Name itself does not necessarily reveal that would be designed for a fan site, and the Complainant moreover has a “My Porsche” section on its own website. The provision of its claimed plans to host a fan site notwithstanding, the Panel is not able to find that the Respondent has established rights or legitimate interests.

C. Registered and Used in Bad Faith

The Policy, paragraph 4(b), furnishes examples of circumstances that “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 on-line 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.”

These examples are expressly not exhaustive. The Complainant cites none of them, because they do not fit the Respondent’s known conduct.

Instead, the Complainant relies on the “passive holding” doctrine, as the Respondent has not put the Domain Name to use, and refers to the Respondent “hiding” its identity. The Complainant also cites the 2002 screenshot displaying an advertisement to sell the Domain Name, although this is not necessarily probative of bad faith.

The Respondent is not hidden and has come forward in this proceeding. The Response states that the Respondent did not acquire the Domain Name until 2016, and this is borne out by the additional evidence submitted in reply to the Panel Order, showing that the Respondent company was formed in 2010 and that Mr. Genovese purchased the Domain Name from a previous registrant in early 2016. The Complainant argues that Mr. Genovese is not properly identified and that some of the text in the email exchange concerning the purchase of the Domain Name is redacted (chiefly the purchase price). The Panel does not find a material issue with the identification of Mr. Genovese. He is identified as the principal owner and legal representative of the Respondent in the company registration, and he appears currently on the Respondent’s website, as well as signing the Response in this proceeding as the Respondent’s authorized representative. His role with the Respondent is not seriously in question; the concern is his, and by extension his company’s, motivations for acquiring the Domain Name.

The Respondent has not yet developed a website for the Domain Name or used it in any other way, and so the bad faith argument hinges on the “passive holding” concept. As detailed in the WIPO Overview 3.0, section 3.3, and cited cases including Telstra Corporation Limited v. Nuclear Marshmallows, supra and several other UDRP decisions involving the Complainant itself, as mentioned above, the passive holding rationale typically relies on “(i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.” The Complainant’s mark is distinctive and well-established, but the other factors that normally underlie a finding of passive holding are absent here. The Respondent is not hidden and filed a Response with a rationale for selecting the Domain Name, ostensibly for a fan site. The conclusion on bad faith largely therefore comes down to deciding whether, in the Complainant’s words, any good faith use of the Domain Name is “absolutely implausible” and whether the Respondent’s claimed intended use provides sufficient grounds to counter that assertion.

The Respondent, a wholesale and retail car dealer, has offered a reason for registering the string “myporsche”, for a PORSCHE owners’ fan site. As noted above, there are difficulties with this string, because it is not clearly laudatory and the Complainant itself has a “My Porsche” section on its website, raising the possibility of confusion. If the Respondent had published a noncommercial fan site by the time of this Decision, it would have been assessed in light of WIPO Overview 3.0, section 2.7.3:

“Where the domain name is not identical to the complainant’s trademark, i.e., it comprises the mark plus an additional, typically descriptive or laudatory term (e.g., <celebrity-fan.tld>), noting the factors listed above at section 2.5.2, panels tend to find that the respondent has a legitimate interest in using the mark as part of the domain name for a fan site if such use is considered to be fair in all of the circumstances of the case.”

The problem with domain names in the form <my+trademark> is that these are often used by the trademark holder (as is the case here) and are not obviously used in a laudatory way for fan sites, so there is a greater chance of confusion. See, for example, Sony Kabushiki Kaisha also trading as Sony Corporation v. Sin, Eonmok, WIPO Case No. D2000-1007: “The Panel determines that the domain name ‘mysony.com’ is confusingly similar to the Complainant’s trademark ‘Sony’. The letters ‘my’, to an English language reader, introduce the concept of possessiveness. That which is possessed is the following letters, namely ‘Sony’, which is the Complainant’s trademark. The addition of the letters ‘my’ has the effect of focusing the reader’s attention on the Complainant’s trademark. Accordingly, the Panel considers that a reader of the domain name would be confused into thinking that the domain name is associated with the Complainant.” Similarly, see DHL Operations B.V. and DHL International GmbH v. Diversified Home Loans, WIPO Case No. D2010-0097 (<my-dhl.com>) (“The Panel also agrees that the particular prefix ‘my-’ may intensify the confusing similarity as this prefix is widely used on the Internet in combination with a trademark to create a personal identification of consumers with a product or service […] taking into account the nature of the disputed domain name and in particular the ‘my-’ prefix employed therein alongside the Complainants’ mark, which in the Panel’s view would inevitably associate the disputed domain name closely with the Complainants’ group of companies in the minds of consumers, the Panel cannot conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainants’ rights under trademark law”); The Coca-Cola Company v. MyFanta Network, S.L., WIPO Case No. D2011-2063 (<myfanta.com>) (“The prefix ‘my’ is in common use in the naming of domain names and websites (the Complainant itself has a website corresponding to the domain name <mycoke.com>, reflecting its trademark COKE)).

In General Motors LLC v. John Brady/ N2 The Net, WIPO Case No. D2012-2109, the disputed domain name was <mychevrolet.com>, not yet developed for an allegedly planned fan site. The panel found bad faith because the Respondent showed no evidence of preparations for such a site despite holding the domain name for more than eleven years. Similarly, the panels were unimpressed with the lack of activity in developing announced fan sites in Volkswagen AG v. Constantin Amann, WIPO Case No. D2015-2011 (<volkswagen.rocks>), and Dr. Ing. h.c. F. Porsche AG v. IT Consult Co. Ltd., Domain Administrator and Whois privacy services provided by DomainProtect, WIPO Case No. D2012-2024 (<porscheracing.com>).

The emphasis in these cases on implicit confusion and the lack of genuine preparations or website development for a fan site demonstrate how the criteria for assessing legitimate interests and bad faith are often parallel. There is an intersection of “fair use” analysis in these cases between the second and third elements of the UDRP complaint. Nominative fair use is usually a consideration for “legitimate interests” under the second element, and that is where it falls in the WIPO Overview, but it can also be considered in applying the “passive holding” doctrine under the third element, bad faith, where (as here) the disputed domain name has not yet been used for an active website. That is because panels typically discuss in “passive holding” decisions whether any future legitimate use is plausible, or whether it is possible to conceive of a legitimate use of the domain name, given the distinctiveness of the mark in question. Therefore, it is appropriate to consider whether a respondent could plausibly make legitimate use of a domain name (as fair use for a fan site, for example, or for a criticism site).

The WIPO Overview 3.0, section 2.5.2, introduces for consideration of “fair use” such factors as these:

“(i) whether the domain name has been registered and is being used for legitimate purposes and not as a pretext for commercial gain or other such purposes inhering to the respondent’s benefit, (ii) whether the respondent reasonably believes its use (whether referential, or for praise or criticism) to be truthful and well-founded, (iii) whether it is clear to Internet users visiting the respondent’s website that it is not operated by the complainant, (iv) whether the respondent has refrained from engaging in a pattern of registering domain names corresponding to marks held by the complainant or third parties, (v) where appropriate, whether a prominent link (including with explanatory text) is provided to the relevant trademark owner’s website, (vi) whether senders of email intended for the complainant but (because of user confusion) directed to the respondent are alerted that their message has been misdirected, (vii) whether there is an actual connection between the complainant’s trademark in the disputed domain name and the corresponding website content, and not to a competitor, or an entire industry, group, or individual, and (viii) whether the domain name registration and use by the respondent is consistent with a pattern of bona fide activity (whether online or offline).”

These factors would have to be weighed in the circumstances of any fan site associated with the Domain Name. No such site has been published to date, but the Respondent has presented some evidence of demonstrable preparations for such a site, particularly in the form of a dozen sets of meeting notes from 2018 and 2019. The notes comprise generally appropriate topics for planning a fan site, and they do not reveal an intent to link to the commercial websites of the Respondent or other sponsors. However, the notes discuss fundraising options such as charging members of the fan club a fee or organizing a crowdfunding campaign, and they detail plans for Facebook ads and selling merchandise.

The Complainant asks the Panel to reject the meeting notes because they are likely fabrications and because they are not fully translated from Italian (the Respondent furnished summaries). The notes are not lengthy, and the Panel has accommodated the Complainant by accepting its supplemental filing in reply to these materials after a delay of more than two weeks, so the lack of a full English translation by the Respondent is not prejudicial in these circumstances. The Complainant observes that the full names of meeting participants are not shown, and the Response as originally filed did not attach the meeting notes or affidavits of participants. Given the limited fact-finding of a UDRP proceeding, the Panel does not reject the notes as evidence but takes into account the that they were not produced initially with the Response and are not supported by witnesses other than Mr. Genovese.

The best known “passive holding” decisions have been written in the context of absent respondents, often serial cybersquatters, so perhaps it is not surprising that the decisions often conclude that there is no “conceivable” legitimate use of the domain name, or that the complainants argue, as in this case, that good faith use of an identical or confusingly similar domain name is “absolutely implausible.” But those phrases do not state the standard for establishing the third Policy element, which is simply that the Respondent, more probably than not, registered and used the Domain Name in bad faith. It is well established that “use” can encompass maintaining a Domain Name registration while harboring the intention to employ it ultimately for an online site or email or other purposes, or to sell or lease it to others, whether or not allowing it to be publicly parked or advertised for sale in the interim.

In this proceeding, where the Respondent is actively contesting the Complaint, there are circumstances that point both for and against bad faith, and the case must be decided on the balance of the probabilities, not against a false standard of “absolute improbability”. Otherwise, the narrow exception of fair use for inherently confusing domain names employed for legitimate fan sites (or similarly for criticism sites), could be readily expanded with dubious assertions of good intentions to mount noncommercial sites.

These facts argue against bad faith: The Respondent in this case is not hidden and has a plausible interest in PORSCHE vehicles. The Respondent has no known history of cybersquatting or animus toward the Complainant. The Respondent has not used the Domain Name for pay-per-click advertising or linked it to the Respondent’s own commercial website. The Respondent has produced notes (following the Panel Order) showing evidence of planning for a nonprofit fan club that would use the Domain Name for a fan site. The Respondent owned the Domain Name for nearly five years without advertising it for sale or approaching the Complainant.

On the other hand, the following facts suggest bad faith in the UDRP context: The Respondent is a commercial car dealership that deals in PORSCHE vehicles, not an individual owner or collector. The Respondent does not deny prior knowledge of the Complainant’s “My Porsche” web page and features. The Respondent, a commercial company, did not register an inexpensive domain name with a clearly “fan” connotation but purchased the more valuable Domain Name at auction and redacted the price in submitting evidence of the transaction in this proceeding. It may fairly be inferred that the Respondent anticipated some commercial advantage from this transaction. Replying to the seller at the time, Mr. Genovese said, “Honestly it is not clear at the moment what will be the use, probably a site of fans of Porsche.” In the Response, the Respondent opined that there was no issue because “Porsche” had become a “generic” term, which is simply incorrect. Ultimately, according to the recently submitted meeting notes, the Respondent considered how to prepare a fan site, but with accompanying sales of memberships and merchandise and possibly crowdfunding. (It would be difficult to manage such a site so as to maintain an entirely noncommercial character within the parameters of fair use.) A fan site and related sponsored activities as contemplated would likely have some value in promoting the Respondent’s dealership. It is hard to explain otherwise why the company, not the individual, purchased the Domain Name and paid for a premium name. Finally, in five years no legitimate, noncommercial use has materialized, but in settlement discussions the Respondent has asked for EUR 6,700 to transfer the Domain Name, indicating that this represents the Respondent’s investment in the Domain Name. As there is no evidence of website development, it appears likely that the bulk of this figure represents the purchase of the Domain Name. This highlights the point above that a commercial company would not be expected to pay a premium for a “.com” domain name for purely noncommercial purposes.

In view of these facts, the Panel finds that the balance of the probabilities indicates bad faith and an instance of passive holding. The Respondent was unquestionably aware of the Complainant’s trademark and probably aware of its “My Porsche” web page. While the Respondent may well have decided to mount a fan site of sorts, it most likely expected that commercial benefits would accrue from that, acting on the mistaken belief, as openly expressed in the Response, that there were no trademark issues in doing so. The ancient dictum applies: Ignorantia juris non excusat. The Panel is of the view that the Policy’s conception of bad faith does not excuse ignorance of the law.

The Panel concludes that the Complainant has established the third element of the Complaint, bad faith, within the meaning of the Policy.

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 Domain Name, <myporsche.com>, be transferred to the Complainant.

W. Scott Blackmer
Sole Panelist
Date: January 23, 2021

¹ Demonstrable preparations to publish a fair-use fan site or criticism site can be taken as evidence against allegations of bad faith under the third Policy element, even if they cannot clearly establish rights for purposes of the second Policy element. This is because paragraph 4(c)(iii) refers to how the respondent is actually “making use” of a domain name for noncommercial fair use purposes, as opposed to paragraph 4(c)(i), which refers to use or “demonstrable preparations” to use the domain name in connection with the bona fide offering of goods or services.