Dr. Ing.h.c.F.Porsche AG v. PrivateName Services OInc./ Veronica Gruenberger
WIPO Case No. D2019-0970
July 9, 2019
Porsche, the German car maker, owns the trademark CAYENNE in a number of jurisdictions including the EU. It is the name of one of their best-selling models but “cayenne” is also a generic word referring to a common kind of chilli pepper. The Respondent was an Austrian escort service provider who registered the domain name <cayennesex.com> now a deactivated website. Even though the Respondent did not contest the matter, Porsche failed to win over rights to the disputed domain name. Here's how:
The flashy car whose trademark is at centre of this dispute.
No Response from the Respondent
A Respondent’s failure to reply may weigh in favour of the Complainant, but it seemed to have little impact in this case. Whilst panellists are permitted to take a range of factual considerations into account, it is unusual but certainly permissible for a panellist to reach conclusions contrary to the Complainant’s submissions. But it is always open in UDRP arbitration, because the Policy itself says that the Complainant must prove all 3 elements, and that must mean whether the Respondent is taking part of not. This stands in stark contrast to civil court procedure and default judgments. This case, therefore, serves as a reminder that in an undefended UDRP matter, uncontested assertions by the Complainant will not go unchecked and the Complainant may still lose if it does not prove its case.
Porsche won on the first round, but lost on the second, so the third did not have to be decided.
The chilli pepper in question
Just add “sex” to get confusing similarity
The mere addition of generic words to the whole of a trademarked name used in a domain name will not prevent the finding of confusing similarity between the domain name and the trademark. This is because the trademarked term will usually be the dominant feature of the domain name. It certainly was in this case: the Complainant’s trademark CAYENNE is very noticeable and, as one of the meanings of “cayenne” has a spicy overtone, adding “sex” did not differentiate the domain name from the trademark. So, looking at the domain name, it could have been referring to the “cayenne” of the trademark, whatever it meant.
Right and Legitimate Interest in the Domain Name
This issue turned on the panellist finding a linguistic connection between the escort services of the Respondent and the generic meaning of cayenne (as in ‘cayenne’ refers to ‘spicy’ refers to ‘hot’ refers to ‘sexual’) concluding that there was such a connection. “Sex” was a description of the services offered at the website, and so was “cayenne” in conjunction with it, and the combined words meant “spicy sex” or words to that effect, which is what was being offered.
The result was that the Respondent had been using two generic words, and had been using them for services that came within the meaning of those words. That amounted to a right to register the domain name as it consisted of generic words being used within their actual meaning.
Moreover, they had nothing to do with Porsche motor vehicles and there was no risk of an implicit link being made to the car manufacturer and no attempt to gain from the reputation of the CAYENNE of the trademark holder.
Slogans as evidence
The only problem with that argument was that the Respondent had already referred to the Porsche motor car on her website. When the escort website was operational it featured the slogan “CAYENNE HIGH CLASS ESCORT HOT LIKE THE PORSCHE & SPICY LIKE THE CHILLI PEPPER!!!”
But this was the only real evidence provided by Porsche to argue that the Respondent was using the trademark improperly to trade off the reputation of the mark and they were the only words on the website. Even though the slogan was featured prominently on the website, it was not accepted that its use amounted to an intention to trade off the Complainant as it was the only reference to Porsche vehicles and no one who got as far as looking at the website would think it was affiliated with Porsche.
So the Respondent won that round. The issue of bad faith , therefore, did not have to be decided.
Finding evidence for the Respondent
An interesting side issue in this case was whether the Respondent might have had another ground for a right or legitimate interest in the domain name, which would have been so if the Respondent was commonly known by that name. The panellist here uncovered evidence based on the previously operative website, said to be that the Respondent was in fact known by the name Cayenne in the course of her work as an escort. This fact alone could well have defeated Porsche’s claim, had the Respondent actually asserted it. If so, it would have been one of the rare cases where a nickname (assuming that “Cayenne” was a nickname or stage name), rather than an actual name was a good enough basis by which to be “commonly known”. But of course the Respondent had not filed a Response.