WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dr. Ing. h.c. F. Porsche AG v. Domains by Proxy, Inc and Sabatino Andreoni
Case No. D2003-0230
1. The Parties
The Complainant is Dr. Ing. h.c. F. Porsche AG, Stuttgart, Germany ("the Complainant"), represented by Lichtenstein, Körner & Partners of Germany.
The Respondent are Domains by Proxy, Inc of Scottsdale, Arizona, United States of America ("the First Respondent") and Sabatino Andreoni of Montreal, Quebec, Canada ("the Second Respondent").
2. The Domain Name and Registrar
The disputed domain name <porschedesign.com> ("the Domain Name") is registered with Go Daddy Software ("the Registrar").
3. Procedural History
The Complaint against the First Respondent was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 22, 2003. On March 24, 2003, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name at issue. That day the Registrar amended the Whois database to remove the First Respondent as registrant and to substitute the name of the Second Respondent. The Registrar then informed the Center that the Second Respondent, not the First Respondent, was the registrant. The Registrar provided to the Center the contact details for the administrative, billing, and technical contact for the Second Respondent.
In response to a notification by the Center that the Complaint was administratively deficient, in that the Respondent was not the First Respondent, but the Second Respondent, the Complainant filed an amendment to the Complaint on April 3, 2003, adding the Second Respondent to the proceedings. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 7, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was April 27, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 28, 2003.
The Center appointed Tony Willoughby as the sole panelist in this matter on May 2, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
No further submissions were received by WIPO or the Panel, as a consequence of which the date scheduled for the issuance of the Panel’s Decision is May 16, 2003.
4. Factual Background
The Complainant is the world famous sports car manufacturer and the proprietor of a large number of trademark registrations worldwide including registrations of the mark PORSCHE DESIGN.
The Domain Name was originally registered in the name of Michel Galarneau of Quebec, Canada. The Complainant launched a Complaint against Mr Galarneau under the Policy in December 2001 (case number D2001-1448) and by a decision dated February 24, 2002, the panelist in that case ordered that the Domain Name be transferred to the Complainant. For reasons that are not explained, that transfer did not take place, but apparently the then registrar, Network Solutions, Inc., cancelled the registration.
On October 31, 2002, the First Respondent registered the Domain Name with the Registrar. The First Respondent, a sister company of the registrar, as its name suggests, is simply the ‘front’ for its clients, its raison d’être being to preserve the anonymity of its clients.
The Complainant conducted Internet investigations which gave it reason to believe that the anonymous client was in fact the Second Respondent, Sabatino Andreoni of Quebec, Canada.
On February 26, 2003, the Complainant sent a cease and desist email to both Respondents complaining about the Domain Name and other domain names held in the name of the Second Respondent. The letter ended with a threat to launch, inter-alia, a complaint under the Policy if the Respondents did not transfer the Domain Name to the Complainant. No response was received to that email.
On March 24, 2003, having been notified of the launch of the Complaint, the Registrar changed its Whois record and entered the name of the Second Respondent as the registrant. The apparent excuse for this is to be found in the First Respondent’s domain name proxy agreement, paragraph 4(c), which reads:
"You further understand and agree that if DPB [Domains By Proxy] is named as a defendant in, or investigated in anticipation of, any legal or administrative proceeding arising out of Your domain name or Your use of DBP’s services, ownership of Your private domain name will automatically revert back to You and Your identity will therefore be revealed in the Whois directory."
The Panel notes that the First Respondent did not react as set out in paragraph 4(c) of that Agreement when it received the cease and desist email from the Complainant. It only did so on being notified of the Complaint, a course of action calculated to inconvenience the Complainant and the Center and to delay the start of these proceedings.
The Domain Name is connected to a website operated by the Second Respondent offering various web design and marketing services.
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to its trademark PORSCHE and is identical to its trademark PORSCHE DESIGN.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant points to the fact that neither Respondent is known by the Domain Name and neither Respondent has been licensed by the Complainant to use the Complainant’s trademark. The First Respondent is simply a ‘front’ for the Second Respondent and the Second Respondent is using the Domain Name and other ‘Porsche’, ‘Ferrari’, ‘Mercedes’ and ‘BMW’ domain names for the purpose of attracting visitors to his site in order to promote his services.
The Complainant contends that the First Respondent’s behavior in respect of the Domain Name to conceal the true identity of the registrant is itself an abuse of the system, thereby constituting bad faith registration and use under paragraph 4(a)(iii) of the Policy. The Complainant contends that the abuse is particularly offensive in circumstances such as the present where the use of the Domain Name is so obviously an infringement of the Complainant’s trademark rights, the Domain Name being used by the Second Respondent to deceive Internet users, attracting them to the Second Respondent’s website by making them believe they are visiting a site connected with the Complainant and all for commercial gain.
When a visitor arrives at the site he/she is met with a notice reading "Andreoni recognizes that ‘Porsche’, the Porsche Logo and various model numbers and cars are registered trademarks of Porsche A.G.. These terms and images are used for identification and artistic purposes only. Andreoni is not affiliated in any way with Porsche A.G." The Complainant contends that this disclaimer is of no use. By then, the visitor has been attracted to the site by a deception and the Second Respondent has obtained the desired business opportunity.
The Complainant contends that the circumstances clearly merit a finding of bad faith registration and use.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interest in respect of the Domain Name; and
(iii) The Domain Name has been registered in bad faith and is being used in bad faith.
A. Identical or Confusingly Similar
The Domain Name comprises the entirety of the Complainant’s trademark PORSCHE DESIGN and nothing more save for the generic domain suffix.
The Panel finds that the Domain Name is identical to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Panel shares the Complainant’s concerns at the behavior of the Registrar and its sister company, the First Respondent, and in particular at the change to the Whois database following notification of the Complaint. If it was appropriate to make that change, it should have been made on receipt of the Complainant’s email which preceded the Complaint.
In this particular case, the inconvenience to the Complainant was slight given that the Complainant had already identified who the anonymous client was. However, it is not difficult to see that there could be other occasions where the identity of the anonymous client could have a major affect on the content of the Complaint, thereby calling for major additional expense in re-drafting of the Complaint.
The Panel takes the view that the Complaint was properly launched against the First Respondent which manifestly and self-confessedly has no rights or legitimate interests in respect of the Domain Name. It is simply a ‘front’ for the Second Respondent.
The Complainant contends that the Second Respondent deliberately sought registration of the Domain Name with a view to using it to advertise his web design and other services, visitors to the website believing that they are visiting a site connected with the Complainant.
Paragraph 4(c) of the Policy indicates to Respondents how they may successfully respond to allegations of this kind, but the Respondents have declined to take up this opportunity.
The Panel finds that the Complainant has made out a prima facie case under this head (paragraph 4(a)(ii) of the Policy) and that the Respondents have a case to answer. The Respondents having failed to provide an answer and the Panel being unable to think of any way in which the Respondents or either of them could reasonably be said to have rights or legitimate interests in respect of the Domain Name, the Panel finds that the Respondents have no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
For the same reasons, the Panel finds on the balance of probabilities that the Second Respondent procured the registration of the Domain Name by the First Respondent with the intention of using it to connect to a website advertising his commercial services, the benefit to him of the Domain Name being that he would attract visitors to his site who would not otherwise have visited the site had they known that the Domain Name was unconnected with the Complainant.
The disclaimer is, of course, useless. By the time a visitor to the site sees it, the deception has occurred. The visitor has been lured to the site and the Second Respondent has obtained the desired business opportunity. The fact that there was felt to be a need to include the disclaimer at all, demonstrates that the Second Respondent was well aware that visitors to the site might well believe that the site was connected in some way with the Complainant.
The Panel finds that the Domain Name was registered in bad faith and is being used in bad faith by the Second Respondent, contrary to paragraphs 4(a)(iii) and 4(b)(iv) of the Policy.
The First Respondent cannot distance itself from the mala fides of the Second Respondent. If it chooses to act as a ‘front’ in these situations, it has to bear responsibility for what goes on behind it.
In light of the foregoing findings, namely that the Domain Name is identical to a trademark in which the Complainant has rights and that the Respondents have no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered in bad faith and is being used in bad faith, the Panel directs that the Domain Name be transferred to the Complainant.
Dated: May 16, 2003