Setting a Dangerous Precedent

Steve Levy ⬥ 30 July

A recent UDRP complaint filed by Dr. Ing. H.c. F. Porsche AG with the World Intellectual Property Organization (WIPO) over the domain names and, was denied. The Panel’s decision stemmed from the fact that the Complainant was unable to prove that the Respondent had no rights or legitimate interests in the domain names, or had registered and used them in bad faith.

At first glance, the site appears to be a legitimate fan site for Porsche car owners or enthusiasts. But in addition to this content, the site also contains a number of paid ads. The Respondent claimed that these ads generate very little revenue, which is merely used to offset the cost of hosting the site, and submitted financial documents as proof of that claim. Ultimately, the WIPO Panelist determined that these ads were merely “incidental commercial activity,” and did not qualify as infringement on the Porsche mark. However, I feel the Panelist’s view takes a very shortsighted approach. By allowing such “incidental commercial activity” on the Respondent’s website, the Panelist in this case applies a rather narrow yet possibly dangerous precedent.

First, not all of the ads on the site relate to Porsche and there are ads for other businesses, some of which are also in the auto industry (e.g., Volkswagon, Kia, Intuit, solar power panels, etc.). This is the very essence of trademark infringement and may harm the Porsche brand regardless of how much revenue the ads generate. Second, although the site’s ad revenue may be small now, there’s no guarantee it won’t grow in the future and Porsche will never know that unless it files a lawsuit at some point in the future and subpoenas the Respondent’s records.

The Panelist’s decision, therefore, forces Porsche to either live with these competing and possibly growing ads or undertake the extraordinary expense of pursuing the Respondent in the courts – one of the main things the UDRP was designed to avoid. The only silver lining in this case was that the Complainant was not found guilty of Reverse Domain Name Hijacking, despite the Respondent’s allegation.

Tags: auto industry, domain names, enforcement, F. Porsche AG, Reverse Domain Name Hijacking, trademark infringement, UDRP, WIPO, World Intellectual Property Organization

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