WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dr. Ing. h. c. F. Porsche AG v. The Training Shed
Case No. D2003-0644
1. The Parties
The Complainant is Dr. Ing. h.c. F. Porsche AG, of Stuttgart, Germany, represented by Lichtenstein, Körner & Partners, Germany.
The Respondent is The Training Shed, of Newcastle, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <porschebikes.com> is registered with Tucows Inc. ("Tucows").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 15, 2003. On the same date, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On August 18, 2003, Tucows transmitted by e-mail to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contacts. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on August 21, 2003. The Center verified that the Complaint together with the Amendment 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 fur 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 August 26, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was September 15, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on October 24, 2003.
The Center appointed Kamen Troller as the sole panelist in this matter on November 4, 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.
4. Factual Background
The Complainant is a large and well-known maker of sports car and bikes.
The Complainant is the owner of numerous trademarks containing the name "PORSCHE" in the United Kingdom, the United States and Germany (Complainantís Annexes 3 to 13). It also registered the international trademarks "PORSCHE" and "PORSCHE BIKE FS" in international classes 7, 8 and 12 for Algeria, Austria, Benelux, Bulgaria, Croatia, Egypt, Spain, the former Yugoslav Republic of Macedonia, France, Hungary, Italy, Liechtenstein, Morocco, Monaco, Portugal, Republic of Korea, Czech Republic, Rumania, Saint-Marin, Slovakia, Slovenia, Switzerland, Vietnam and Yugoslavia (Complainantís Annexes 14 to 16). Finally, the Complainant is the owner of the European trademark "PORSCHE" in Nice classes 3, 8, 9, 12, 14, 16, 18, 21, 24, 25, 28, 34, 35, 36, 37, 39 and 42 (Complainantís Annex 17).
The Respondent offers triathlon-training services to individuals through its currently unavailable website "www.thetrainingshed.com" (Complainantís Annex 18). Its alleged director, is purportedly an Ironman Lanzarote winner.
The Training Shed registered the disputed domain name <porschebikes.com> with Tucows on February 21, 2002. The WHOIS information for the domain name lists The Training Shed as the registrant and Mr. Matt Belfied as the Administrative Contact, and "firstname.lastname@example.org" is mentioned as technical contact.
The Respondent did not submit any statement of defense. To the best knowledge of the Panel, the Respondent did not registered "porschebikes" or "porschebikes.com" as a trademark in any jurisdiction.
On July 10, 2003, the Complainant sent a Cease and Desist Letter to the Respondent requesting the transfer of the domain name (Complainantís Annex 22). It results from a sworn affidavit submitted by the Complainant that on July 23, 2003, Mr. Matt Belfield contacted the legal representative of the Complainant by telephone, requesting the donation of a Porsche bike as the condition for the transfer of the domain name being set on the agenda. Complainant rejected this offer (Complainantís Annex 23); after communication of this refusal to the Respondent, no further contact occurred between the parties until the filing of the official Complaint with the Center.
5. Partiesí Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are applicable to the disputed domain name. More precisely, it alleges that:
(i) the domain name <porschebikes.com> is similar to the Complainantís trade name and trademarks "PORSCHE" and "PORSCHE BIKE FS" or "PORSCHE BIKE S" on which the Complainant has rights. The Complainant contends that the top level designation ".com" does not prevent confusion, that the component "bikes" is descriptive and therefore not distinctive, and that the domain name does not only indicate the plural form of Porsche bike, but also a specific model of Porsche Bike, that is the "PORSCHE BIKE S"; (ii) the Respondent has no rights or legitimate interests in the domain name; and (iii) the domain has been registered and is used in bad faith, in an attempt to mislead users, to attract them by the means of the Complainantís prestige and to keep them away from the Complainantís official website; moreover, the Complainant alleges that the Respondent has not yet created any legitimate content for its website, which would be constitutive of bad faith passive use.
The Complainant requests the Administrative Panel to issue a decision that the contested domain name be transferred to the Complainant.
The Respondent did not submit any response to the Complaint.
6. Discussion and Findings
A. Procedural matters
For the cases where the Respondent did not submit a response, paragraph 5(e) of the Rules states that in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint.
No such exceptional circumstances exist in the present case. The rule mentioned above shall thus be applied.
B. Substantive matters
Pursuant to Paragraph 4(a) of the Policy, the Complainant must prove that each of the three elements are present:
(i) the Respondentís 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 interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
(a) Identical or confusingly similar
The Complainant alleges that the domain name <porschebikes.com> is similar to the Complainantís trademark and trade name "PORSCHE" since the latter is entirely embodied in the disputed domain name. Moreover, it contends that the part "bike" is descriptive and thus not distinctive; the only distinctive part of the domain name is precisely the Complainantís trademark and trade name.
In the assessment of whether a domain name and a trademark are confusingly similar, all relevant circumstances must be taken into account, in particular, the degree of oral, visual or conceptual similarity between both terms, the similarity of the goods or services they are used for, and the distinctiveness the trademark has either per se or by virtue of the markís recognition.
The Panel finds that the domain name and the trademark are confusingly similar, based upon the following factors:
- the Complainantís trademark and trade name "PORSCHE" is embodied in the disputed domain name and forms the distinctive part of the latter. This similarity is both phonetical and visual;
- the Complainant has registered in the United States and in Germany the trademark "PORSCHE BIKE S", which is visually similar to the disputed domain name, except for the facts that (1) the "s" is in capital letter and separated from the word "bike" in the trademark and (2) the domain name ends by ".com", which are minor differences that do not prevent confusion, as stated in former Administrative Panel Decisions, see for instance WIPO Case No. D2001-0079 "Tchibo";
- the trademark and trade name "PORSCHE" is mainly used for sports cars and bikes, the domain name <porschebikes.com> has been registered by a company offering sports training services, among them biking; therefore, the similarity in the goods and services makes no doubt;
- "PORSCHE" is a well-known and distinctive trademark that is entitled to strong level of protection.
Considering these circumstances, the Panel concludes that the domain name is confusingly similar to a trademark in which the Complainant has rights.
(b) Rights or legitimate interests
Paragraph 4 (c) of the Policy defines the circumstances required for the Respondent to demonstrate "rights to and a legitimate interest in the domain name", the Respondent only being required to demonstrate one of the following circumstances (in particular and without limitation) to prove its rights to or legitimate interest in the domain name:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.
By refraining from submitting a response to the present complaint, the Respondent has made it difficult for the Panel to demonstrate the existence of these circumstances, or even one of them.
To the contrary, the Panel notes that more than nineteen months after having registered the disputed domain name, the Respondent failed to create any genuine content to the website accessible through "www.porschebikes.com", the latter being filled only by advertisement. The Respondent did not bring forward credible elements to support the theory according to which he would be commonly know by the domain name. It actually did not show that it was making any use of the domain name at all.
Based on these considerations, the Respondent has failed to satisfy the conditions of Paragraph 4(c) of the Policy. The Panel thus concludes that he has no rights or legitimate interests in the domain name.
(c) Bad faith
Paragraph 4(a) (iii) of the Policy requires the Complainant to prove use in bad faith as well as registration in bad faith.
Paragraph 4(b) of the Policy sets forth a non-exclusive list of circumstances each of which shall be evidence that the registration and use of a domain name is 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 web site 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 web site or location.
The Complainant contends that the Respondent has registered and used the disputed domain name in bad faith for the following reasons:
- since there is no business relationship between the Parties, the Respondent has no legitimate interest to use "PORSCHE" in its domain name; the purpose of such a use could only be to mislead the user in the double goal of attracting them to the Respondentís sport training services, and to keep them away from the defendantís official website (paragraph 4 b (iv));
- the absence of any actual use of the website since its creation is an element supporting the opinion according to which the disputed domain name was only registered in the future purpose of selling it to the Complainant or, as requested by the Respondent, of exchanging it against valuable goods, i.e. a Porsche Bike (Paragraph 4(b)(i)).
Based on these considerations, and to the fact that the Respondent did not rebut them, the Panel must find that the Complainant has succeeded in proving that the Respondent has registered and used the domain name in bad faith.
The Panel decides that the domain name <porschebikes.com> is confusingly similar to the trademarks "PORSCHE" and "PORSCHE BIKE S"; that the Respondent has no rights or legitimate interests in respect of the domain name, and that the Respondent has registered and used the domain name in bad faith.
Pursuant to Paragraph 4(a) of the Policy and 15 of the Rules, the Panel decides that the domain name be transferred to the Complainant.
Dated: November 14, 2003