WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin
Case No. D2003-0888
1. The Parties
Complainant is Dr. Ing. h.c. F. Porsche AG, of Stuttgart, Germany, represented by Lichtenstein, Körner & Partners, Germany.
Respondent is Vasiliy Terkin, of Odessa, Ukraine, represented by Mike Roze, Internet People Assoc. LLC, United States of America.
2. The Domain Name and Registrar
The disputed domain name <porsche-autoparts.com> is registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 6, 2003. On November 6, 2003, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On November 6, 2003, Go Daddy Software transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that 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 Respondent of the Complaint, and the proceedings commenced on November 11, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was December 1, 2003. Respondent did not submit any response by this date. Accordingly, the Center notified Respondentís default on December 2, 2003. On the same day, Respondent filed a Response with the Center, without producing evidence in support of its contentions. However, Respondent had been duly notified on November 11, 2003, of the ultimate date of submission of its Response and does not claim any exceptional circumstances that may justify his non-compliance with the time period he had been granted to file its Response with the Center. In accordance with the Rules, paragraph 14(a), this Response (and any correspondence exchanged between the parties in connection with the Response) shall be disregarded by the Panel and the Panel will proceed to a decision on the Complaint. The Panel has nonetheless quickly read the disregarded response. The Panel would like to point out that the disregarded response was not supported by any evidence and, in any case, would not have had any impact on the outcome of this case if it had been accepted as part of the case file.
The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on December 9, 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
Complainant asserted and provided evidence in support of the following facts, which the Panel finds well established:
Complainant is a well-known worldwide sports car maker. As demonstrated by Complainantís evidence (Annexes 3 to 7), Complainant is the owner of numerous trademark registrations consisting of, or incorporating, the word "Porsche" for cars and parts thereof, among which:
- US trademark "PORSCHE", Registration No. 0618933, registered on January 10, 1956;
- Canadian trademark "PORSCHE" and design, Registration No. TMA117101, registered on March 4, 1960;
- German trademark "PORSCHE", Registration No. 643195, registered on August 26, 1953;
- International registration of trademark "PORSCHE" No. 179928, registered on October 8, 1954.
"Porsche" is also the distinctive part of Complainantís trade name.
Complainant operates a web site at "www.porsche.com" which opens the gate to national web sites. Porsche cars and car parts are distributed and shipped worldwide through a network of official dealers.
When Complainant first noticed the disputed domain name <porsche-autoparts.com>, this domain name had been registered since October 7, 2002 with Go Daddy Software Inc. for Mike Roze, Internet People Assoc. LLC, this person having been authorized by Respondent to represent him regarding the current dispute.
A disclaimer appears at the very bottom of the home page of the web site "www.porsche-autoparts.com", although it is visible only if the web page is completely scrolled down, as follows:
"PORSCHE logo is a registered trademark of PORSCHE corporation".
Further investigations conducted by Complainant show that the web site to which the disputed domain name redirects, is in fact part of a larger network of web sites clearly related in design and content, where car parts of unknown origin, used or new and for all kinds of brands (such as Jaguar, Chrysler, Ö) are offered for sale. These investigations also show that a single individual, identified by Complainant as Mr. Bastardi, appears to be running this whole network of web sites.
Complainant thus sent on May 7, 2003 two cease-and-desist letters to Mr. Roze, Registrant at that time of the disputed domain name, and Mr. Bastardi, requesting removal of the Porsche trademark and shield and relinquishment of the disputed domain name.
By letter of May 12, 2003, Mr. William Bastardiís counsel assured his clientís compliance with Complainantís requests. Despite this assurance, the disputed domain name still appeared to be used and on May 13, 2003, Complainantís counsel sent to Mr. Bastardiís counsel a proposed settlement agreement in order to resolve the matter.
No written reply was received but on May 23, 2003, Mr. Bastardiís counsel called Complainantís counsel and informed her that his client no longer operated the web site "www.porsche-autoparts.com" and no longer owned the disputed domain name.
A new search by Complainant in the whois records indeed revealed that the disputed domain name was no longer owned by Mr. Roze but by Respondent, Mr. Vasiliy Terkin.
Further investigations conducted by Complainant also show that:
- there seems to be no real person behind the name of Respondent: the name of Respondent is in fact the name of a Russian literary character and the telephone number given by Respondent in the whois record is false;
- the contact page has been removed.
It thus became impossible for Complainant to approach Respondent.
5. Partiesí Contentions
Complainant claims that the disputed domain name is confusingly similar to Complainantís trade name and trademark PORSCHE, stressing the fact that the extension ".com" does not prevent confusion as notably held in the Telstra decision (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000).)
Complainant emphasizes that its trade name and trademark is well known all over the world and is integrated in its entirety into Respondentís domain name.
According to Complainant, a descriptive component like "autoparts" even adds to the confusion because the user is led to believe that the trademark owner or some entity associated with it, operates a sales platform for original new or certified used car parts.
Complainant stresses the fact that the presence of the disclaimer on the home page of the web site "www.porsche-autoparts.com" does not prevent such confusion but on the contrary, confirms the false impression that Complainant is running this web site. Complainant adds that in any case, WIPO Panels have already held that disclaimers do nothing to prevent confusion (ISL Worldwide and The Federation Internationale de Football Association v. Western States Ticket Service, WIPO Case No. D2001-0070, (March 23, 2001).)
Complainant also asserts that Respondent has no right or legitimate interest in respect of the disputed domain name, since:
(i) there is no use nor are there any preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Complainant indicates that Respondent is not and has never been an authorized dealer of Complainantís products and there is no and never has been any business relationship between the parties. The car parts sold by Respondent through the web site "www.porsche-autoparts.com" and the other web sites to which the latter redirects via hyperlinks, are of all kinds of brands (and are not only Porsche car parts) and come from unknown sources, which might constitute a great risk for people relying on the good name of "Porsche";
(ii) Respondent is not commonly known by the disputed domain name;
(iii) Respondent is not making a noncommercial use of the disputed domain name and in any case, there is no legitimate use of this domain name, in particular as Respondent tries hard to remain anonymous, thus avoiding being held responsible for the parts sold online, and completely fails to disassociate itself from Complainant. According to Complainant, the basic concept behind Respondentís business is to trick Internet users into believing that the web site "www.porsche-autoparts.com" is operated, sponsored, or endorsed by Complainant.
With regard to the registration and use of the disputed domain name by Respondent, Complainant claims that such registration and use occurred in bad faith for the following reasons:
(i) Respondent could not have been unaware of Complainantís trademark and trade name and its reputation when he registered the disputed domain name, as he is active in the business of selling car parts;
(ii) Respondent registered the disputed domain name in order to prevent Complainant from reflecting its mark in a corresponding domain name, and Respondent engaged in a pattern of such conduct, having registered dozens of domain names composed of a famous trademark and a generic word indicating the sale of cars or car parts.
(iii) Respondent intentionally misleads and traps users who seek genuine information about Complainant and its products.
This is also a case of general bad faith because Respondent intentionally and systematically uses false contact information in the whois records to evade litigation.
Based on the foregoing, Complainant seeks the transfer of the domain name <porsche-autoparts.com> to Complainant.
Respondent did not reply to Complainantís contentions.
6. Discussion and Findings
The Panelís findings under each heading with reference to the partiesí contentions, the Policy, Rules, Supplemental Rules and applicable substantive law are the following:
A. Identical or Confusingly Similar
Complainant has proven that it is the owner of the trademark PORSCHE with regard to cars and parts thereof.
This trademark is included in the disputed domain name <porsche-autoparts.com>.
The fact that the word "autoparts" is added to Complainantís trademark does not eliminate the identity, or at least the similarity, between Complainantís trademark and the disputed domain name, as "autoparts" is a descriptive component of the disputed domain name. In numerous cases, it has been held that a domain name that wholly incorporates a Complainantís registered mark may be sufficient to establish confusing similarity for purposes of the UDRP.
The Panel further agrees with Complainantís contention that such descriptive component added to Complainantís trademark even adds to the confusion by leading users to believe that Complainant operates the web site associated to the disputed domain name and therefore sells certified Porsche car parts through this web site, such confusion being not prevented by the wording of the disclaimer.
The Panel therefore finds that the action brought by Complainant meets the requirement of the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
According to the Policy, paragraph 4(b)(ii), Complainant must demonstrate that Respondent has no rights or legitimate interests in the domain name.
Evidence produced by Complainant in support of its Complaint shows that when entering the web site "www.porsche-autoparts.com", users are informed that "currently", there is no offering of "any auto parts for Porsche" and are encouraged to visit other web sites, directly accessible via hyperlink (Annex 10), where car parts of all kinds of brands are offered for sale (e.g., "www.carpartsamerica.com", Annex 16).
Furthermore, Annex 12 of the Complaint shows that the list of "Porsche links" available on the home page of the web site "www.porsche-autoparts.com", in fact has nothing to do with Complainantís products since they redirect users to other web sites where car parts for all kinds of brands are being offered for sale. The Panel notes that most of the domain names of these web sites are, like in the present case, composed of the descriptive component "autoparts" and a well-known car brand such as Jaguar or Chrysler.
The Panel infers from those circumstances that there is no use of the disputed domain name in connection with a bona fide offering of goods or services. There is also little doubt, when examining the Complaint and the evidence produced in support of it, that Respondent is making a commercial use of the disputed domain name and clearly intends to misleadingly divert consumers.
In addition, it appears that Respondent is neither affiliated to Complainant nor is an official dealer. There is no and there has never been any legal or business relationship between the parties.
As a consequence, such as in the "Telstra" decision (Telstra Corporation Limited v. Nucleal Marshmallows, WIPO Case No. D2000-0003, February 18, 2000,), it can be stated that: " Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Uniform Policy, or of any other circumstances giving rise to a right to or legitimate interest in the domain name. In light of (i) the fact that the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to apply for or use any domain name incorporating any of those marks, and (ii) the fact that the word "telstra" appears to be an invented word, and as such is not one traders would legitimately choose unless seeking to create an impression of an association with the Complainant, the Administrative Panel finds that the Respondent has no rights or legitimate interests in the domain name."
Although Complainantís trademark is not an invented word but the name of a person/car manufacturer ("Porsche"), the facts brought to the panelís attention in WIPO Case No. D2000-0003 are similar to the ones of the present dispute.
Finally, Respondent was given the opportunity to demonstrate his rights to, and legitimate interests in the disputed domain name in accordance with the Policy, paragraph 4(c), but did not file any Response nor did he produce evidence proving such rights to, or legitimate interests in the domain name <porsche-autoparts.com> and more specifically, that:
- before any notice to Respondent of the current dispute, there was a 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,
- Respondent has never been commonly known by the domain name <porsche-autoparts.com>; or,
- Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain in order to misleadingly divert consumers or to tarnish the trademark PORSCHE.
Therefore and in the absence of any contrary evidence, the Panel finds that Respondent has no rights to, or legitimate interests in the domain name <porsche-autoparts.com>. The Panel therefore considers that the requirements of the Policy, paragraph 4(a)(ii) are fulfilled.
C. Registered and Used in Bad Faith
As demonstrated by Complainant, Respondent is apparently active in the business of selling car parts.
Thus, there is no doubt that when registering the disputed domain name, he knew that he was registering a protected trademark and/or trade name.
Respondent has not proven that he had any right whatsoever to do so.
As a consequence, the Panel finds that the registration of the disputed domain name was performed in bad faith.
With regard to the use in bad faith of the disputed domain name, the Panel is convinced by Complainantís evidence that Respondent has intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainantís trademark as to the source, sponsorship, affiliation or endorsement of Respondentís trademark. The association of the descriptive component "autoparts" with the trademark PORSCHE in the disputed domain name, as well as the wording of the disclaimer on the home page of the web site "www.porsche-autoparts.com", are inter alia circumstances that may lead users to believe that Complainant is operating or is associated to the operation of this web site.
Furthermore and when examining the whole network of web sites to which the web site "www.porsche-autoparts.com" redirects, there is no doubt that Respondent is obviously engaged in a pattern of conduct consisting of registering domain names composed of trade names and/or trademarks of famous car companies and a generic word such as "autoparts" and as a result, prevents trademark owners from reflecting the mark in a corresponding domain name.
Moreover, it is not proven that Respondent is or has been an authorized dealer of Complainantís products and/or that there is or has been any business relationship between the parties.
The Panel also wishes to emphasize that the removal of the contact page on the web site "www.porsche-autoparts.com", the change of the name of the Registrant after the first attempt by Complainant to obtain the removal of the PORSCHE trademark and shield and relinquishment of the disputed domain name, and the false contact information given in the whois records are also evidence of Respondentís bad faith.
Finally, Respondent did not submit any Response or evidence proving that it used the disputed domain name <porsche-autoparts.com> in good faith, while it had been given the opportunity to do so.
Therefore, the Panel finds that the domain name <porsche-autoparts.com> was registered and is used by Respondent in bad faith and considers the requirements of the Policy, paragraph 4(a)(iii) to be fulfilled.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <porsche-autoparts.com> be transferred to the Complainant.
Dated: January 6, 2004