WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dr.Ing. h.c. F. Porsche AG v. Simon Postles
Case No. D2001-1360
1. The Parties
The Complainant in these Administrative Proceedings is Dr. Ing. h.c. F. Porsche AG, Porscheplatz 1, 70435 Stuttgart, Germany.
The Respondent is Simon Postles residing in British Colombia, Canada.
2. The Domain Name and Registrar
This dispute concerns the domain name <porschecanada.com>.
The registrar with which the domain name is registered is Domain Discover, P.O. BOX 502010, San Diego, CA, USA ("the Registrar").
3. Procedural History
On November 15, 2001, the Complaint was filed with the WIPO Arbitration and Mediation Center ("the Center") pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999. The Complaint was received by the WIPO Arbitration and Mediation Center ("the Center") by e-mail on November 15, 2001, and the hard copy was received on November 20, 2001.
On November 20, 2001, the Center sent a Request for Registrar Verification to the Registrar by e-mail.
On November 20, 2001, the Registrar responded to the Center by e-mail and advised that the Registrar was not yet in receipt of the copy of the Complaint, that the domain name was registered with the Registrar and the Respondent was at that time the current registrant and administrative contact. The Registrar further provided contact details of the administrative contact and billing contact for the registration, confirmed that the Policy applied to the registration and advised that and the registration had an "active" status. The Registrar also confirmed that the specific language of the registration agreement as used by the registrant was English.
The Center reviewed the Complaint and having requested and received a signature on the last page of the Complaint from the Complainant, the Center was satisfied that the Complaint complied with the Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter "the Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter "the Supplemental Rules") and that the appropriate fees had been paid by the Complainant.
On November 30, 2001, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding relating to said domain name to the Respondent by post/courier (Complaint with enclosures) and by e-mail (Complaint without attachments). A copy of said Notification was sent to the authorised representative of the Complainant by e-mail (Complaint without attachments). Further copies of said Notification were sent to the Internet Corporation for Assigned Names and Numbers ("ICANN") and to the Registrar.
Said Notification of Complaint and Commencement of Administrative Proceeding inter alia advised the Respondent that the Administrative Proceedings had commenced on November 30, 2001, and that the Respondent was required to submit a Response to the Center on or before December 20, 2001.
No Response was received within the time allowed.
On January 10, 2002, the Center sent a Notification of Respondent default to the Respondent.
On January 14, 2002, the Center invited James Bridgeman to act as Administrative Panel in these proceedings.
On January 18, 2002, having received a Statement of Acceptance and Declaration of Impartiality from said James Bridgeman the Center proceeded to appoint this Administrative Panel consisting of a single member.
On the same date, the Center sent a Notification of Appointment of Administrative Panel and Projected Decision Date to the Parties and the case file was transmitted to the Administrative Panel.
In the view of the Administrative Panel, proper procedures were followed and this Administrative Panel was properly constituted.
The Complainant subsequently sought to furnish further documentation as an annex to the Complaint. This Administrative Panel sought and received submissions from the Respondent relating to the admissibility of such additional documentation. The Respondent submitted that he was prejudiced by this delay in that he had not been able to use said domain name for five months and he requested that the Complaint be dismissed for delay. Having considered these submissions, this Administrative Panel decided to admit the additional documentation into evidence and further decided that there was no basis for a dismissal on the grounds of delay.
4. Factual Background
The Complainant has been a manufacturer of high performance sports cars for more than 50 years and is the owner of numerous trademarks consisting of or incorporating the word "PORSCHE" throughout the world.
The Complainant is the registered owner of the following trademarks in Canada, the Respondentís country of residence:
- "Porsche" registration number TMA117102, filed on December 2, 1958, and registered on March 4, 1960, in respect of "Automobiles and parts thereof";
- "POF"script device registration number TMA419099, filed on December 5, 1990, and registered on November 5,1993, in respect of various motorcar related services;
- "Porsche" script device registration number TMA397848, filed December 4, 1990, and registered on May 1, 1992, in respect of "toy cars and toy car kits";
- "Porsche" registration number TMA346447, filed on October 2, 1987, and registered on October 14,1988, in respect of "clothing";
- "Porsche Design" registration number TMA341382, filed September 12, 1980, and registered on June 10, 1988, in respect of various consumer products;
- "Porsche Design" registration number TMA387368, filed on July 23, 1981, and registered on August 9, 1991, in respect of "perfumes";
- "Porsche" and shield device, registration number TMA117101, filed on December 2 and registered on March 4, 1960, in respect of "automobiles and parts thereof";
- "Porsche" and shield device, registration number TMA403242, filed on December 4, 1990, and registered on October 2, 1992, in respect of "toy cars and toy car kits";
- "Porsche" and shield device, registration number TMA414155, filed December 5, 1990, and registered on July 2, 1993, in respect of motorcar related services.
In addition to the above, the Complainant is the owner of numerous other registered trademarks around the world including: German Trademark "PORSCHE" script device registration number 643 195, registered since August 26, 1953; International Registration "PORSCHE" script device 179 928 first registered on October 8, 1954, and since renewed; USA Federal trademark "PORSCHE" registration number: 71-668978, registered since January 10, 1956, in respect of "automobiles and parts thereofÖ"; USA Federal trademark "PORSCHE" registered on October, 12 1999, in respect of "smokers articles, namely matches and ash trays"; European Trademark Registration "Porsche" device, registration number 000073098 registered since December 12, 2000, in respect of various goods in classes, 3, 8, 9, 12, 14, 16, 18, 21, 24, 25, 28, 34, 35, 36, 37, 39, 42.
The Complainant has established and operates its principal web sites accessible via the domain-names <porsche.de> and "porsche.com>.
There is very little information about the Respondent save that he has given the above address to the Registrar as his contact address, he registered the said domain name on October 10, 2001, and he is the registrant for the said registration. The administrative contact, technical contact and zone contact for the said domain name registration is "621086 BC Ltd. Simon Postles".
5. Partiesí Contentions
The Complainant requests the Administrative Panel issue a decision that the contested domain name be transferred to the Complainant in accordance with paragraph 4(a) of the Policy, because it is alleged that:
1) the domain name <porschecanada.com> is identical or confusingly similar to a trademark or service mark "PORSCHE" in which the Complainant has rights; and
2) the Respondent has no rights or legitimate interests in respect of said domain name; and
3) the domain name was registered and is being used in bad faith.
The Complainant submits that it is the owner of trademarks consisting of or incorporating the word "PORSCHE" in most jurisdictions throughout the world including the above referenced registered trademarks.
The Complainant submits that the it is and has been for more than 50 years a manufacturer of high performance sports cars. From the commencement of its operations it has used the word "PORSCHE" as a prominent and distinctive component in its trade name. The Complainantís cars are distributed worldwide through a network of official dealers. The trademark and trade name "PORSCHE" are known throughout the world and enjoy a high level of reputation.
The Complainant submits that very little is known about the Respondent. Despite great efforts having been made by the Complainant to ascertain information about the Respondent, the Respondent has remained elusive. A search on the Google search engine, and searches in address and telephone databases, in both white and yellow pages, on the Internet yielded no result for the name "Simon Postles", the Respondentís hotmail address or any company called "621086 BC Ltd.". The Complainant also submits that its investigations have led it to the conclusion that the Respondent is not among the used cars dealers in British Colombia and there is no such dealer under any of Respondentís addresses.
The Complainant submits that the domain name <porschecanada.com> is confusingly similar to the Complainantís trade name and trademark "PORSCHE". The Complainantís trademark is well known all over the world and integrated in its entirety into the domain name in issue in these administrative proceedings.
The Complainant submits that the word "PORSCHE" is the distinctive element of said domain-name. The ".com" extension within said domain name is irrelevant and this has been so held by numerous administrative panels in decisions since Telstra Corporation Limited v. Nuclear Marshmallows (WIPO Case No. D2000-0003, February 18, 2000), relating to the domain name <telstra.org>, including Dr. Ing. h.c.F. Porsche AG v. Gary Charles Brown, a.k.a. Gary Brown, a. k. a. Charlie Brown, a. k. a. Gary Charlie Brown (WIPO Case No. D2001-0919, September 15, 2001), relating to the domain name <porscheimporter.com>.
The Complainant further submits that a descriptive component such as the word "canada" even adds to the confusion as it is likely that the owner of such domain name will be mistaken for the authorized, exclusive dealer of the Complainantís motor cars in Canada, thus attracting internet users interested in the Complainantís products. In this regard, the Complainant refers to the decisions of administrative panels in Dr. Ing. h.c. F. Porsche AG v. MACROS-TELECOM corp. (WIPO Case No. D2001-0993 October 16, 2001), relating to the domain name <porsche-usa.com>; CSA International (a.k.a. Canadian Standards Association) v. John O. Shannon and Care Tech Industries, Inc. (WIPO Case No. D2000-0071, March 24, 2000), relating to the domain name <csa-canada.com>; Rolls-Royce PLC v. Hallofpain (WIPO Case No. D2000-1709 February 19, 2001), relating to the domain name <rollsroycecanada.com> and Inter-IKEA v. Polanski (WIPO Case No. D2000-1614, January 22, 2001), relating to the domain name <ikeausa.com>.
The Complainant submits that the Respondent has no rights or legitimate interest in said domain name.
The Complainant submits that there has been no use, nor has there been any preparations to use of said domain name with a bona fide offering of goods or services. Since the trade name and trademark involved is well known, and have been used for a long period of time, the onus rests on the Respondent to bring evidence for his legitimate interest (cf. Dr. Ing. h.c. F. Porsche AG v. MACROS-TELECOM corp. (WIPO Case No. D2001-0993, October 16, 2001), relating to the domain name <porsche-usa.com>. He failed to do so in the pre-filing correspondence.
The Respondent has claimed that he intends to have the domain name resolve to a web site for "used Porsche automobiles". The Claimant submits that this is implausible as the Respondent offered the domain name for sale on two occasions. Furthermore to the best of the Complainantís knowledge the Respondent has no such business.
The Complainant states that the Respondent could not have been unaware of the Complainantís trade name and trademark and its reputation, particularly as he claims to own Porsche cars himself. Nonetheless the Respondent still decided to register the contested domain-name for his own financial benefit. In this regard the Claimant refers to the decisions of the administrative panels in Maruti Udyog Limited v. Maruti Infotech (WIPO Case No. D2000-0520, July 26, 2000), and Inter-IKEA v. Polanski (WIPO Case No. D2000-1614, January 22, 2001), relating to the domain name <ikeausa.com>.
The Complainant states that the Respondent is not and has never been an authorized dealer of the Complainantís products and there has never been a business relationship between the Parties. The Respondent has never been authorized or licensed by the Complainant to utilize the Complainantís trade name or trademark. The Complainant also submits that the Respondent is not making a non-commercial use of the domain name.
The Complainant submits that the Respondent is not commonly known by the domain name.
The Complainant further submits that even if the Respondent was a dealer in used cars, even Porsche cars, he could not legitimately use the contested domain name because the public would draw the false conclusion that the web site is being operated by the Complainant. The public would be confused as to the source of the products or sponsorship of the activities. There is nothing in the disputed domain name that would signal to the public that the Respondent is distinguished from the Complainant, such as by use of the terms "Second Hand" or "Used".
With regard to the issue of bad faith, the Complainant submits that on November 12, 2001, shortly after the Complainant became aware of the contested domain name, the representatives for the Complainant sent a cease and desist letter to the Respondent, using the e-mail address for the Respondent given in the WHOIS database, and demanded that the domain name be transferred to the Complainant.
The reply received the same day reads as follows: "As we have stated the domain name is for sale. Thanks Simon."
On November 13, 2001, the Complainant sent a further e-mail to the Respondent stating that it did not intend to "buy" the domain name as the Complainant was entitled to demand its transfer for reasons of trademark law, but nevertheless the Complainant was willing to pay $ 50 flat "as a reimbursement for the registration costsÖ"
Subsequently the Complainant received a further email from the Respondent on November 13, 2001, that stated:
In view of the fact that you wish to threaten me with consequences, then I withdraw my offer to sell you this Domain name. I am in the auomobile [sic] business and this web site shall be completed. I have numerous used Porsche automobiles for sale and I will be displaying them for sale on my site. I do not believe that you have any rights to the name porschecanada. As this is written as one word. I am not looking to start a dispute with you or the company that you represent.
The Complainant has submitted copies of this exchange of e-mail correspondence with the Respondent.
The Complainant submits that the use of a hotmail-account for communications by the Respondent further intensifies suspicions that the identity given in the WHOIS entry is not his true identity and that the Respondent is hiding his true identity and address to evade legal action.
Said domain name resolved to a web site on which there is the following notice posted: "Domain For Sale: <porschecanada.com>. The web site consisted of just one page, visible on one screen. The words <porchecanada.com> and <BuyDomains.com> were conspicuously displayed at the top and bottom of the page. In the center of the page the visitor was informed that "This domain is for sale" and encouraged to "Please contact the owner for pricing information".
By activating the <BuyDomains.com> link the user was redirected to a web site where domain name related services and trade in domain names is promoted.
The Complainant submits that there are circumstances that indicate that the Respondent registered said domain name for the sole purpose of selling it to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the out-of-pocket costs directly related to the domain name. In this regard the Complainant refers to the decision of the administrative panel in WIPO Case No. D2001-0993, relating to the domain name <porsche-usa.com>, and states that this proposition is also supported by the decisions in many other cases.
The Complainant submits that the price asked was not related to the costs of the registration. There can be no doubt that the Respondent intended to sell said domain name to the highest bidder. The Respondent confirmed his willingness to sell the domain name in his initial reply to the Complainant and offered it for sale to the Complainant. He only withdrew his offer when the amount offered by the Complainant proved unsatisfactory to him. The Complainant submits that its offer of $50 would have more than the costs of registration.
The Complainant submits that the Respondentís offer to sell said domain name was put online immediately after the domain name had been registered. Tellingly, the Respondent chose the domain trading firm "Buydomains.com" to register the domain name for him and to advertise the offer on the Internet. The Complainant submits that this is evidence that the Respondent intended from the very beginning to sell this domain name rather than to use it for any legitimate purpose.
The Complainant submits that said domain name is being used in bad faith, even though the Respondent disconnected the web site shortly after he had received the offer of just $50, which he did not like. Such interruption in the use which occurs in the wake of a cease and desist letter does not make any difference with respect to the "being used" element of the test in paragraph 4(a) of the Policy. In WIPO Case No. D2000-0003, relating to the domain name <telstra.org>, and other decisions including WIPO Case No. D2001-0993 relating to the domain name <porsche-usa.com>, the administrative panels have held that a passive holding of a domain name may be sufficient to constitute bad faith, taking into consideration the overall context of Respondent's behavior. The Respondent in the present Administrative Proceedings is endeavouring to cover up his act of cyber squatting by removing the online evidence. Such passive holding qualifies as use in bad faith.
The Complainant argues that even if the Respondent were a dealer in used Porsche cars he use of the domain name would be in bad faith, as users seeking genuine information about the Complainant and its products would intentionally mislead and trap into believing the site was somehow authorized or sponsored by the Complainant.
There was no response filed by the Respondent.
6. Discussion and Findings
Paragraph 4(a) of the Policy places on the Complainants the onus of proving that:
(i) the domain name in dispute is identical or confusingly similar to a trademark or service mark in which the Complainants have 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.
Identical or Confusingly Similar to the Complainantís Trademark
Having considered the evidence and submissions made by the Complainant and in the absence of any Response from the Respondent, this Administrative Panel accepts that the Complainant is the owner of the trademark "PORSCHE" in most jurisdictions throughout the world including Canada where the Respondent appears to reside. This Administrative Panel further accepts the Complainantís submission that the domain name is confusingly similar to the Complainantís said trademark. The Complainant is clearly correct in stating that the word "porsche" is the distinctive element of said domain name. The extension indicating the gTLD ".com" is irrelevant and the addition of the name of a country viz. "Canada" adds to the confusion.
The Respondentís Rights or Legitimate Interest in said Domain Name
With regard to the question of whether the Respondent has any rights or legitimate interest in said domain name, it has been accepted in the decisions of numerous administrative panels that once this allegation is made by the Complainant the onus shifts to the Respondent to establish that he has such rights or legitimate interests in the domain name in issue.
In the present Administrative Proceedings, the Respondent has not filed any submissions or evidence whatsoever, save an objection raised to the request of the Complainant to furnish further annexes to the Complaint after the file had been transferred to the Administrative Panel.
On the other hand, the Complainant has established that it is the owner of a confusingly similar trademark in numerous jurisdictions throughout the world. The Complainant has also submitted that the Respondent is not and has never been an authorized dealer of Complainantís products and there has never been any business relationship between the Parties.
There is no evidence that prior to receiving any notice of the dispute, the Respondent has made any use of or any demonstrable preparations to use the said domain name in connection with a bona fide offering of goods or services. In fact the only use to which he appears to have put the domain name was to have it resolve to a web site on which he offered the registration for sale. The intention to establish a web site at the address was not expressed until after his offer to sell the domain name was rejected by the Complainant. There is no evidence of any demonstrable preparations to establish such a web site. On the contrary, all the evidence is that the Respondent registered said domain name, in the knowledge that it was confusingly similar to the Complainantís trademark, and because of its association with the Complainantís trademark, and for the purposes of re-sale.
The Complainant has submitted that the Respondent has never been commonly known by the domain name and this has not been disputed by the Respondent. Similarly there is no evidence that 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.
The Complainant has carried out extensive, if not exhaustive, searches and has failed to discover any evidence that the Respondent is carrying on business as a second hand dealer in "PORSCHE" cars. The Respondent has neither denied this nor has he produced any evidence of any such business.
The Complainant has therefore made out a prima facie case that the Respondent has no rights or legitimate interest in said domain name and his Administrative Panel must conclude that the Complainant has established the second element of the test in paragraph 4(a) of the Policy.
With regard to the questions of whether the Respondent registered and is using the said domain name in bad faith, the only use to which the Respondent put the said domain name up to the initiation of these proceedings was to have it resolve to a web site on which it was offered for sale. Furthermore the exchange of e-mails between the Respondent and the Complainant and the Respondentís rejection of the Complainantís offer to purchase the registration for $50.00 clearly indicate that the Respondent 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 <PORSCHE> for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name.
The Complainant has therefore satisfied the third element of the test in paragraph 4(a) of the Policy viz. that the Respondent registered and is using said domain name in bad faith.
This Administrative Panel therefore concludes that the Complainant has made out a prima facie case with regard to each of the three elements set out in paragraph 4(a) of the Policy and is entitled to the relief sought. In reaching this decision, this Administrative Panel is fortified by the fact that the Respondent failed to file a Response or deny any of the allegations made by the Claimant, even though he clearly had the opportunity to do so as he took the opportunity to object to the admission of additional evidence by the Complainant.
With specific reference to paragraph 4 of the Policy and paragraph 15 of the Rules this Administrative Panel decides that said domain name <porschecanada.com> is confusingly similar to the Complainant's trade mark "PORSCHE", that the Respondent has no rights or legitimate interest in respect of said domain name <porschecanada.com> and that the Respondent has registered and is using said domain name in bad faith.
Accordingly, this Administrative Panel decides that said domain name <porschecanada.com> should be transferred to the Complainant.
Dated: March 21, 2002