WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Doctor.Ing.h.c. F.Porsche AG v. Stonybrook Investments Limited

Case No. D2001-1095

 

1. The Parties

The Complainant is Doctor.Ing.h.c. F.Porsche AG, a company organised and existing under the laws of Germany, located at Porsche platz 1, DE-70435, Stuttgart, Germany. It is represented by Doctor Rolf Diekmann of Lichtenstein, Körner & Partners, Stuttgart, Germany.

The Respondent is Stonybrook Investments Limited, whose address is given as 18 Mopan Street, Belize City, N/A 0000 IN, BZ.

 

2. The Domain Name and Registrar

The domain name at issue is <porshe.com>.

The Registrar with which the disputed domain name is registered is TUCOWS, INC, 96 Mowat Avenue, Toronto, Ontario M6K 3M1, CA.

 

3. Procedural History

On September 3, 2001, a Complaint was received by the WIPO Arbitration and Mediation Center ("WIPO Center") for decision in accordance with the Uniform Policy for Domain Name Dispute Resolution Policy ("the Policy"), adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999.

On September 5, 2001, the Registrar responded to a request for verification of the Domain Name <porshe.com> confirming details of the Respondent, that the Policy applied to the domain name and that the current status of the domain name was "licensed".

On September 10, 2001, the WIPO Center transmitted a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent. The Respondent was advised that a response to the Complaint was required within 20 calendar days i.e. by September 30, 2001.

No response was received on behalf of the Respondent and on October 2, 2001, a Notification of Respondent Default was sent to the Respondent.

On October 17, 2001, the Panel was appointed. The Panelist finds that the Administrative Panel was properly constituted in accordance with the Rules and Supplemental Rules.

The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint meets the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy as approved by ICANN on October 24, 1999, ("the Rules") and the Supplemental Rules.

 

4. Factual Background

The Complainant has asserted and provided evidence in support of the following facts. Unless stated otherwise, the Panel finds these facts established.

The Complainant has manufactured high-performance sports cars for over 50 years. From the outset, it has been using the mark PORSCHE as the prominent and distinctive part of its trade name.

The Complainant is the owner of numerous trademarks consisting of or incorporating the word PORSCHE. The trademark and trade name PORSCHE are known all over the world and enjoy an excellent reputation. The Complainant first acquired trademark protection for the word PORSCHE in international class 12 (automobiles and parts thereof) and other classes in 1954.

The Complainant operates its websites under the domain names <porsche.de> and <porsche.com>.

The Complainantís submissions do not specify the date on which it first became aware of the disputed domain name. The Complainant states that when it first noticed the website corresponding to the disputed domain name, the user was automatically redirected to the website <www.casino44.com>, a gambling website. The domain name <casino44.com> is registered in the name of the Respondent.

The Complainant states that since then, the site has been altered. Currently, users are redirected from the site <porshe.com> to the site <superInternetdeals.com> which the Complainant also registered in the name of the Respondent. This website offers credit cards and other financial services.

When the users realise that this is not the website he or she intended to visit and attempts to leave by closing the window, the user is "taken hostage" and is forced to watch another window building up automatically. This window offers the user cash rewards and gambling opportunities. If the user tries to close the second screen yet another window builds up offering an Internet search service.

 

5. Partiesí Contentions

A. The Complainant

The Complainant claims that the domain name <porshe.com> is confusingly similar to the Complainantís trade name and trademark "Porsche". There is only a slight variation between the disputed domain name and the trademark PORSCHE - the omission of the "c". This variation leaves the phonetics of the Complainantís trademark and trade name intact and is therefore highly likely to cause confusion as to the identity, affiliation or endorsement of the Respondentís website by the Complainant.

The Complainant submits that the Respondent has no right or legitimate interest in respect of the disputed domain name and the Respondent has not used or made preparations to use the domain name for a bona fide offering of goods or services.

The Complainant alleges that the disputed domain name was intentionally registered to capture users seeking information about the Complainant who inadvertently misspelt or mistyped the Complainantís name. It submits that this "capture" is exacerbated by the fact that once the users has entered the website, the user is taken "hostage".

The Complainant asserts that the reputation and value of the trade name and trademark PORSCHE is the result of the Complainantís achievements and the Respondent should not be allowed to exploit the Complainantís reputation in the mark.

The Complainant claims that the Respondent is not commonly known by the disputed domain name, nor is the Respondent making non-commercial use of the domain name. By contrast, the Complainant submits that the Respondent is offering services on the site for its own commercial benefit and is likely to benefit from the increased traffic resulting from the use of the misspelt domain name. There is no content available on the website corresponding to the disputed domain name. The domain name is used exclusively to redirect users to some other website operated by the Respondent.

The Complainant further contends that the Respondent has registered and is using the disputed domain name in bad faith. It says that the Respondent has no legitimate interest in registering and using a domain name which so closely resembles a well-known and prestigious trade name and trademark, of which, the Respondent could not have been unaware.

The Complainant describes the Respondent as a "notorious typosquatter", who registers domain names to trap users who inadvertently misspell or mistype well-known trademarks or trade names while seeking to visit websites operated by the owners of such trademarks or trade names.

The Complainant states that the Respondentís activities have been discussed in numerous earlier WIPO decisions, in which a large number of "typo domains" registered by the Respondent have been cited.

The Complainant has referred the Panel to the following decisions:

(a) Yahoo! Inc. and GeoCities v. respondent D2000-0587;
(b) British Broadcasting Corp. v. respondent D2000-0683;
(c) AltaVista Company v. respondent D2000-0886;
(d) Microsoft Corp. v. respondent D2000-1274;
(e) Delta Air Lines Inc. v. respondent D2000-1686;
(f) Netscape Communications Corp. v. respondent D2001-0328;
(g) Xerox Corp. v. respondent D2000-0380.

In all of these cases, the Respondent was ordered to transfer the disputed domain name to the various complainants.

Examples of "typo" domain names registered previously by the Respondent and its affiliates include:

· ayhoo.com
· chatyahoo.com
· eeeyahoo.com
· eocities.com
· gecities.com
· geocitie.com
· geocitiesyahoo.com
· geocitis.com
· geocties.com
· geosities.com
· gocities.com
· goecities.com
· iahoo.com
· myahoo.com
· myyahoo.com
· wwwchatyahoo.com
· wwwgeocities.com
· wwwmyahoo.com
· yafoo.com
· yahooguide.com
· yahoonews.com
· yahoosearch.com
· yahomail.com
· yahu.com
· yahuu.com
· yahwho.com
· yahwoo.com
· yanoo.com
· yauoo.com
· yyahoo.com
· alfavista.com
· algavista.com
· altavispa.com
· altavisha.com
· altavitsa.com
· altavsta.com
· altawista.com
· atavista.com
· atlavista.com
· atlavisa.com
· wwwelavista.com
· mcirosoft.com
· yajoo.com
· kodack.com
· zerox.com

B. The Respondent

The Respondent did not file a Response.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to:

"decide a complaint on the basis of the statements and documents submitted in accordance with the policy, these rules and any rules and principles of law that it deems applicable".

The burden for the Complainant, under paragraph 4(a) of the ICANN Policy, is to show:

● That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

● That the Respondent has no rights or legitimate interests in respect of the domain name; and

● That the domain name has been registered and is being used by the Respondent in bad faith.

Domain name is confusingly similar/identical to a trademark or service mark in which the Complainant has rights

The Complainant has provided extensive evidence of its trademark PORSCHE throughout the world. It is a very famous and well established trademark, which is associated with the Complainant and the Complainantís products globally.

The disputed domain name is identical to the Complainantís trademark and trade name PORSCHE apart from the omission of the "c". The disputed domain name represents what is likely to be a common misspelling of the Complainantís trademark and trade name, as it is phonetically identical.

The Panel finds that the domain name <porshe.com> is confusingly similar to the trademark PORSCHE in which the Complainant has rights.

Respondent has no rights or legitimate interests in respect of the domain name

The Policy outlines (paragraph 4(c)) circumstances which, if found by the Panel to be proved, shall demonstrate the Respondentís rights or legitimate interest in the domain name. These circumstances are:

(i) before any notice to the Respondent of the dispute, the Respondentís use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with the bona fide offering of goods or services; or

(ii) the Respondent (as an individual, business or other organisation) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate non-commercial 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.

The Panel finds that none of the conditions outlined in (i) to (iii) have been made out. The Respondent has not provided any formal Response and the Panel finds it appropriate to draw an adverse inference from the Respondentís failure to respond to the Complaint (SSL International v Mark Freeman, WIPO Case No. D2000-1080 and Alta Vista Company v Grandtotal Finances Limited, WIPO Case No. D2000-0848).

Overall the Panel can find no evidence to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name.

The Panel therefore finds that the Complainant has met the requirement in paragraph 4(a)(ii) of the Policy.

Domain name has been registered and is being used in bad faith

Paragraph 4(b) of the ICANN Policy states:

"For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, 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 website or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location."

It should be noted that the circumstances of bad faith are not limited to the above.

The Panel considers that the Respondentís conduct in respect of the domain name <porshe.com> is in breach of (iv) above. By using the domain name <porshe.com>, it is intentionally attempting to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation or endorsement of those websites.

An Internet user who misspells the Complainantís name or trademark Ė either through ignorance or inadvertence Ė will find himself or herself redirected to the Respondentís site which is a wholly different site with no connection whatever to the Complainant. The Respondent is taking advantage of that error or ignorance and is using the goodwill and reputation in the PORSCHE trademark for its own commercial gain.

The Panel has also noted the Complainantís comments that the Respondent is a notorious "typosquatter". It has reviewed the previous decisions in which the Respondent has been involved. These cases demonstrate a course of conduct and a pattern of behaviour embarked on by the Respondent in registering phonetic equivalents or typographical variations of other partiesí well-known trademarks. The Panel finds that these instances of similar fact evidence are probative in showing bad faith on the part of the Respondent in this case. Furthermore, the Respondent has had fair notice of the Complainantís reference to these earlier findings of bad faith registration of other domain names. The Respondent has chosen not to contest the complaint or to challenge the relevance of these instances.

 

7. Decision

For the foregoing reasons, the Panel decides that:

(a) the disputed domain name registered by the Respondent is confusingly similar to a trademark in which the Complainant has rights;

(b) the Respondent has no rights or legitimate interests in respect of the disputed domain name;

(c) the disputed domain name was registered and is being used in bad faith.

Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <porshe.com> be transferred to the Complainant.

 


 

Andrew Brown
Sole Panelist

Dated: October 26, 2001