WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dr. Ing. h.c. F. Porsche AG v. SETEC Sembinelli & Partner
Case No. D2001-0550
1. The Parties
The Complainant is D. Ing. h.c. F. Porsche AG ("Porsche") of Porscheplatz 1, DE-70435 Stuttgart, Germany. The Complainant is represented by Messrs Lichtenstein, Körner and Partners of Heidehofstrasse 9, DE-70184 Stuttgart, Germany. The Respondent is SETEC Sembinelli & Partner of Wendelinweg 2, CH-4613 Rickenbach, Switzerland.
2. The Domain Name and Registrar
The domain name in dispute is <porsche-cup.com>. The Registrar for the domain name is TUCOWS, INC. of 96 Mowat Avenue, Toronto, Ontario M6K 3M1, Canada.
3. Procedural History
The Complaint was received by the WIPO Arbitration and Administration Center on April 17, 2001, by hard copy. An acknowledgement of receipt of the Complaint was given by the Center on April 18, 2001. A request for Registrar verification was sent to the Registrar by email and hard copy on April 18, 2001. Confirmation was given that the Respondent was the current registrant of the domain name at the address referred to above.
Notification of the Complaint and commencement of the administrative proceedings was given by the Center on April 23, 2001, by email. No response was received from the Respondent.
However on May 2, 2001, the Complainant's representative wrote to the Center referring to negotiations between the parties and requesting that the appointment of the panelist be postponed. The Center responded indicating that the proceedings should be suspended. The Complainant's representative contacted the Center again on May 4, 2001, indicating that an agreement had been reached between the parties by which the Respondent had undertaken to transfer the domain name to the Complainant. The Complainant therefore formally requested suspension of the proceedings for a period of 30 days. The Center granted a suspension of the proceedings until June 3, 2001. It appears that a settlement was not achieved because on June 11, 2001, the Complainant's representative requested that the proceedings be reinstated. The Center confirmed that the proceedings would be reinstated as of June 11, 2001, with the Respondent's time for serving a Response extended until June 30, 2001. No response was received and accordingly on July 2, 2001, notification of the Respondent's default was given to him by email. On July 10, a Panel was appointed consisting of a single member Mr. Clive Duncan Thorne.
4. Factual Background
The Complainant has for over 50 years been a manufacturer of high performance sports cars. From the commencement of its operations it has used the term "Porsche" as a prominent and distinctive part of its trade name. The Complainant gives evidence that it is the owner of numerous trade marks throughout the world consisting of or incorporating the word "Porsche". Copies of the trade mark registrations are set out in Annexures 3, 4, 6, 7, 8, 9 and 10 to the Complaint.
The Complainant indicates that as a result of the widespread use of the name "Porsche" the trade mark and trade name "Porsche" are known all over the world and enjoy "a great reputation". The complainant gives evidence that for more than 10 years it has been organising and sponsoring an international car racing series known as "Porsche-Cup", to which only Porsche cars in near standard specification are admitted. The cars can be operated by privateers (sic) as well as more professional teams. Races take place on some of the world's best known racetracks, including Monte Carlo, Silverstone, Monza, Indianapolis, Nurburging and Hockenheim. At Annex 11 to the Complaint are print-outs from the Complainant's web site relating to the Porsche Cup 2000.
According to the Complainant's evidence (there being no Response) the Respondent is engaged in selling new and used cars, as well as car parts. He apparently uses the trade mark name "SETEC Sembinelli & Partner", which appears both at the bottom of his stationery and on his web site. It is under this trade name that he is listed in the WHOIS database. Appearing on the Respondent's stationery is the logo "SETEC", incorporating the Swiss cross emblem and the URL <www.sembinelli.com>. There is no mention on the stationery of the Complainant's trade mark or of the disputed domain name. The Complainant indicates that nothing is known about the "Partner" indicated in the Respondent's trade name. The name of the "Partner" is neither specified in the Respondent's web site nor in the letters that he sent to the Complainant's representatives and which are exhibited to the Complaint.
The Complainant confirms that the Respondent neither is nor has ever been an official dealer of Porsche cars. Rather according to the Respondent appears to be primarily engaged in the import and distribution of new Skoda and Hyundai cars.
The Complainant also confirms that the Respondent is not, nor has ever been, authorised or licensed by the Complainant to utilise the Complainant's trade name or trade mark. There is no business relationship of any kind between the Complainant and the Respondent.
The Complaint arises because the Respondent operates his main internet web site under the domain name <sembinelli.com>. The home pages or starting pages of the web sites available under <sembinelli.com> and under the disputed domain name are identical. Only the head title of the home page reflects the different domain names.
When the internet user activates one of the hyperlinks placed on the home page of <porsche-cup.com> and <sembinelli.com> he is automatically directed to the URL <home.sunrise.ch/s.setec/>, where an identical home page and the whole content of the web site is stored. Thus it can be seen that the Respondent operates exactly the same web site under three different domain names. On each of the Respondent's identical home pages the photo of a Porsche racing car is conspicuously displayed. In addition to that, the URL <www.sembinelli.com> and the "setec" logo are visible. There is no disclaimer or other notice disassociating the Respondent from the Complaint.
Through a list of hyperlinks located on the left hand side of the home page the user is able to enter several sub-directories. By clicking on the "neuwagen" button the user is automatically carried to <home.sunrise.ch/s/setec/neuwagen.html> site where a list of models and prices of new Skoda and Hyundai cars appears. At the bottom of the page there is a hyperlink directed to "www.daltec.ch", which is said to be dealing with trailers and which is described as the Respondent's partner business.
When entering the sub-directory "occasioned" the user is shown a list of five used Porsche cars priced from 15,000 to 159,000 Swiss Francs. At the bottom of the page there is a hyperlink to the Complainant's official web site <www.porsche.com> thus reiterating a false impression of an association with the Complainant.
Under the sub-directory "auto-Zubehor" the Respondent offers car parts and accessories, eg wheels, tyres and steering wheels. The Respondent claims the status of an official dealer by displaying links to <www.pirelli.de> and <www.yokohama.ch> and other well known producers of car parts and accessories.
When the user enters the sub-directory "veranstaltungen" he finds a list of racing events, including races belonging to Porsche Cup and again links to web sites operated or sponsored by the Complainant. There is therefore a link between the Complainant and the Respondent's activities. The Complainant asserts that this demonstrates that the Complainant has approved of the Respondent's activities. The hyperlinks point to "www.porschemotorsport.com", which is currently operated by the Complainant and where the user is asked to visit <www.porsche.com>, and to the web site operated by the officially approved Porsche Club in Switzerland. At Annexes 12 and 13 to the Complaint are print outs of the web sites.
There was some pre-trial correspondence between the parties including a demand letter sent on March 12, 2001, by Lichtenstein, Körner and Partners. By reply dated March 20, 2001, the Respondent requests a Power of Attorney from the Complainant. He refers to "Swiss customs" to rebut the Complainant's complaint but does not explain why he has registered the domain name in dispute or whether he claims to have a legitimate interest in it. He contends angrily that "one does not set a lawyer at the other party but talks with each other to reach an agreement". He asserts that he will not ask for a "stunning amount of money as a fee for transfer of the domain name but will do so if he is further intimidated by the Complainant".
The Complainant produced a written Power of Attorney as requested on March 26, 2001, and further requested a transfer of the domain name. The Respondent replied on April 2, 2001, and "demands for the last time" that the person having signed the Power of Attorney contact him by telephone. "It is only under this condition that a solution out of court could be imagined". There is to be no further correspondence in evidence.
5. The Complainant’s Contentions and Discussions
In order to succeed in its request for an Order to transfer the domain name, the Complainant has to prove each of the elements set out in paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy are present.
These are as follows:
(i) The Respondent's domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interest in respect of the domain name;
(iii) The Respondent's domain name has been registered and is being used in bad faith.
The Panel proceeds to deal with each of these in turn.
(i) The Respondent's domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights
The Complainant asserts that:-
(a) The domain name <porsche-cup.com> is similar to the Complainant's trade name and trade mark "Porsche".
(b) The Complainant's trade name and trade mark is well known all over the world and integrated in its entirety into the Respondent's domain name. It asserts that "Porsche" is the relevant part of the domain name. The extension indicating the top level domain ".com" is irrelevant as well as the hyphen and the word "Cup".
(c) "Cup" is the prize given to the winner of a sports contest. It also has come to mean "sports tournament" as in "World Cup". It refers to the second level domain name "Porsche-Cup" as being identical with the name of the Complainant's well known car racing series.
The Panel finds that the Complainant has on the evidence it has submitted, rights in the trade mark "Porsche", and a result of the widespread trading activities in relation to high quality cars sold under the mark "Porsche", widespread unregistered rights in the mark "Porsche". The Panel would be prepared to accept that this evidence shows that the domain name in dispute is confusingly similar to the Complainant's trade marks. It is strengthened in this view by the evidence given by the Complainant of promotion of the "Porsche Cup", as set out in Annex 11 to the Complaint. The domain name <porsche-cup.com>. is identical to the name "Porsche Cup" in which the Panel accepts the Complainant has acquired a trading goodwill.
(ii) The Respondent has no rights or legitimate interest in respect of the domain name
The Complainant submits that the Respondent has no right or legitimate interest in respect of the domain name for the following reasons:-
(a) The Respondent has adduced no evidence of a legitimate interest.
(b) No trader in new or used cars who acts in good faith would reasonably choose the name of a car racing series to promote his business.
(c) The Respondent is not in a position to exploit the name or mark "Porsche" legitimately.
(d) The Respondent is not and has never been an authorised dealer of the Complainant's product and there has not ever been a business relationship between the parties.
The Panel accepts these submissions but in particular is swayed by the fact that there is no evidence before it to support any rights or legitimate interest in respect of the domain name vested in the Complainant. Indeed the evidence submitted by the Complainant is to the contrary. The Respondent has never had any form of business relationship with the Complainant and in particular has never been a dealer for the Complainant. To the contrary the evidence appears to be that the Respondent is using the domain name to establish an association with its sale of Hyundai and Skoda cars.
The Panel finds for the Complainant under this head.
(iii) The Respondent's domain name has been registered and is being used in bad faith
The Complainant's submissions in relation to paragraph 4(a)(iii) are as follows:-
(a) It relies upon paragraph 4(b)(iv) of the Policy to the effect that the Respondent by using the domain name has intentionally attempted to attract for commercial gain internet users to the web site [...] by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the web site or location or of a product or service on the web site or location.
(b) It also relies upon paragraph 4(b)(i) of the Policy in that it submits that the Respondent has registered and acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant [...] for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name.
In support of submission (a) above the Complainant argues that there are "no conceivable circumstances" in which the Respondent could have acted in good faith. It submits that it is "obvious" that the Respondent registered the domain name for just the reason he uses it, ie to promote his own sales business. The plan is to attract and to trap users who hope to find information from the Complainant about its car racing series.
The Panel agrees with submission (a). Having found that the Respondent has no legitimate right or interest in the domain name but is nevertheless using the domain name for the purpose of promoting his own Hyundai and Skoda car dealing business he is inevitably and intentionally attempting to attract commercial gain.
The Panel therefore finds that the Respondent has registered and used the disputed domain name in bad faith.
It is therefore unnecessary for the Panel to consider the Complainant's second submission under paragraph 4(b)(i) of the Policy.
It follows that the Complainant has succeeded in all three limbs of paragraph 4(a) of the Policy and succeeds in its complaint.
6. Decision and Findings
The Complainant requests that the domain name <porsche-cup.com>, registered by the Respondent, be transferred to the Complainant Porsche. The Panel finds for the Complainant and orders the domain name <porsche-cup.com> to be transferred from the Respondent to the Complainant.
Clive Duncan Thorne
Dated: July 20, 2001