WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dr. Ing. h.c. F. Porsche AG v. Meechai
Case No. D2006-1116
1. The Parties
The Complainant is Dr. Ing. h.c. F. Porsche AG, Stuttgart, Germany, represented by Lichtenstein, Körner & Partners, Germany.
The Respondent is Meechai, RJ, Bangkok, Thailand.
2. The Domain Name and Registrar
The disputed domain name <porschedesign.net> is registered with Intercosmos Media Group d/b/a directNIC.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 30, 2006. On September 1, 2006, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On September 1, 2006, Intercosmos Media Group d/b/a directNIC.com transmitted by email 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 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 the Respondent of the Complaint, and the proceedings commenced on September 11, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was October 1, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 2, 2006.
The Center appointed Angelica Lodigiani as the Sole Panelist in this matter on October 11, 2006. 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 owns many PORSCHE DESIGN trademark registrations around the world to designate prestigious and high quality consumer products with a unique design, like watches, luggage, glasses, pens and other accessories. The main page on the web where these products are being presented to a worldwide community of consumers is at “www.porsche-design.com”. Among these trademarks are the following:
International Registration No. 456717, reg. July 29, 1980, based on German Trademark No. 1003434, reg. 11.06.1980 for various classes of goods and services protected in various classes for consumer products and services;
International Registration No. 461505, reg. June 3, 1981, for goods in class 3, based on German Trademark No. 1018088;
US Registration No. 1292660, reg. September 4, 1984, for various products; and
Thai Registration No. 93997, reg. February 6, 1991 (cases, bags, belts).
Moreover and primarily, the Complainant owns worldwide registrations for the well-known trademark PORSCHE, among which are the following:
German Registration No. 643195, reg. August 26, 1953 (cars and parts thereof);
International Registration No. 179928, based on the foregoing, reg. October 8, 1954;
Community Registration No. 000073098, priority date April 1, 1996, reg. December 12, 2000 (various classes of goods and services);
UK Registration No. 729217 reg. April 14, 1954, including renewals;
US Registration No. 0618933, reg. January 10, 1956 (automobiles and parts thereof);
International Registration No. 562572, reg. October 27, 1990 (cars and their parts and other vehicles; Engineering research);
International Registration No. 459706, reg. February 24, 1981 (car related services);
International Registration No. 473561, reg. September 29, 1982 (various goods and services including consumer products and merchandising);
International Registration No. 657048, reg. January 27, 1996 (Financing, Travel);
Thai Registration No. 100823, reg. March 27, 1990 (airplanes, sports cars).
Finally, the Complainant is also the owner of PORSCHE and shield trademark registrations, including the following:
Thai Registration No. 172666, reg. December 9, 2002 (cars and their parts);
International Registration No. 730310, reg. November 12, 1999 (various goods and services including the car and consumer sector); and
Canada Registration No. A117101, filed December 2, 1958, reg. March 4, 1960 (Automobiles and parts thereof).
The relevant trademark certificates that the Complainant has attached to the Complaint attest the Complainant’s ownership of the aforementioned trademarks.
The Complainant operates its main website at “www.porsche.com”, which serves as a gateway to websites designed to the various needs of Internet users from countries or regions across the worlds. To customers from Southeast Asian countries, including Thailand, information is provided at “www.porsche.com”.
5. Parties’ Contentions
In its Complaint, the Complainant asserts the following.
For over 50 years the Complainant has been a manufacturer of sports cars and it enjoys a global reputation. Porsche cars are distributed worldwide, including in Thailand, where the Respondent is located, through a network of official dealers. The official dealer in Thailand is AAS Auto Service Co. Ltd., 33/9, 16-18 Moo 8 Vibhawadi-Rangsit Road, Don Muang, Sikan, Bangkok 10210, Thailand.
On June 23, 2004, soon after the domain name was first discovered, a cease and desist letter was sent by e-mail to the Respondent wherein the Complainant demanded that the contested domain name be transferred.
The Respondent failed to answer and to comply with the Complainant’s requests. Nevertheless, the Complainant decided against pressing its case in an arbitration proceeding or in court because it hoped that the Respondent would not renew the domain name. The domain name was backordered through Snapnames, Inc. The Respondent renewed the domain name registration and the Complainant filed this UDRP proceeding.
According to the Complainant, nothing is known about the Respondent, except that the same contact data are provided in the Whois records of <it-mall.com>, which redirects to a commercial parking website with sponsored links and an invitation to contact the Respondent for a purchase of the domain name.
The name and address given in the Whois records of both <it-mall.com> and the contested domain name are incomplete.
The Respondent is not an official dealer of Porsche cars or products and there is not, nor ever has been, any commercial relationship whatsoever between the parties.
From January 2003 (inexplicably prior to the creation date according to the Whois records) through January 2004, “www.porschedesign.net” was archived in the Wayback Machine and from the beginning, there was no genuine content but just a standard parking page with a phony search bar and sponsored links. Such links are intended to earn the website owner a share of fees paid by the owners of linked websites to the provider of parking services.
The content of the website has never changed much and the Respondent did not care to build a website for any legitimate purpose. Meanwhile the headline on the website reveals the Respondent’s true intentions even more clearly than before, i.e., that “porschedesign.net is for sale”.
The disputed domain name is confusingly similar to the Complainant’s trade name and trademark PORSCHE because “Porsche” is the prominent and distinctive part in the domain name.
Moreover, the combination of Porsche, the Complainant’s trade name, and the suffix “design” creates a confusing similarity because it suggests that the Complainant owns the domain name or that at least a close relationship exists between the Complainant and the owner of the domain name. “Design” as an element of the domain name even increases the danger of confusion because it refers to the design of Porsche cars and the Porsche Design line of high priced consumer products.
The Respondent has no right or legitimate interest in respect of the challenged domain-name because:
(i) the Respondent is not and has never been an authorized dealer of the Complainant’s products and there is not and has never been a business relationship between the parties;
(ii) the Respondent does not use the domain name in connection with a bona fide offering of goods or services (see below);
(iii) the Respondent is not commonly known by the domain name and is not making a non-commercial or fair use of the domain name, rather he is using it for commercial purposes.
The Respondent has registered and uses the disputed domain name in bad faith according to Paragraph 4(b)(i) and (iv) of the Policy because:
(i) circumstances indicate that the Respondent has registered the domain name primarily for the purpose of selling the domain name registration to the Complainant for a valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name;
(ii) by using the domain name, the Respondent intentionally attempts to attract, for commercial gain, Internet users to the website to participate in earnings generated by a standard parking page.
Complainant further alleges that there is evidence of bad faith here because the Respondent both hides its identity by providing false of at least incomplete contact information in the Whois records, apparently to avoid being held legally responsible, and the Respondent has registered the domain name more than three and a half years ago and has never made the slightest attempt to build a genuine website under the contested domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Since the Respondent did not submit any response and consequently did not contest any of the Complainant’s contentions, this case shall be decided based on the allegations and documents submitted by the Complainant.
Under paragraph 4(a) of the Policy, the Complainant must prove each of the allegations referenced in the headings of paragraphs A., B., and C. below.
A. Identical or Confusingly Similar
The Panel finds that the domain name <porschedesign.net> is identical to the Complainant’s trademark PORSCHE DESIGN.
It is well known that the mere addition of a gTLD or top level domain name, such as “.net”, does not prevent a domain name from being found confusingly similar. For technical reasons all domain names include a generic or a country code top-level domain name. Thus, top level domain names lack distinctive character and cannot be considered elements capable of reducing confusing similarity between a trademark and a second level domain name when these are identical.
Therefore, the Panel finds that the Complainant’s earlier PORSCHE DESIGN trademark and the Respondent’s domain name <porschedesign.net> are identical.
The Panel is satisfied that the conditions under paragraph 4(a)(i) of the Policy are satisfied.
B. Rights or Legitimate Interests
The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
Proving a negative fact is always a very difficult task. The Policy, under paragraph 4(c), indicates a series of circumstances, which, if proved, demonstrate that the Respondent has rights or legitimate interests in the challenged domain names. However, the Respondent failed to file any Response. Consequently, he did not present any evidence to indicate that he has rights or legitimate interests in the domain name at issue. Accordingly, the Panel will consider whether the case established by the Complainant is sufficient to show the Respondent’s lack of rights and legitimate interests.
According to the Complainant, the Respondent is not and has never been an authorized dealer of the Complainant’s products and there is not and has never been a business relationship between the parties.
Moreover, the Panelist finds that the Respondent is not making any legitimate non-commercial or fair use of the domain name. Since the conflicting domain name is practically identical to the Complainant’s famous trademarks, the Respondent could not reasonably pretend it was intending to develop a legitimate activity under the domain name at issue. According to the evidence submitted with the Complaint (Annexes 22-24) the domain name <porschedesign.net> originally resolved to a standard parking page with a phony search bar and sponsored links. It is likely that through these links the owner of the disputed domain name earned a compensation from the owners of the linked websites.
According to the Complaint, the content of the website never changed much and the headline on the website at the time the Complaint was filed stated that the domain name <porschedesign.net> was for sale (see Annex 24).
The use of a domain name reproducing a third party’s well-known trademark to lead to a parking page providing access to sponsored links, presumably for commercial gain, and stating that the domain name “is for sale” cannot be considered a legitimate, non-commercial or fair use of the disputed domain name absent an intent for commercial gain or to misleadingly divert consumers or to tarnish the trademark at issue. Nor is this a use in connection with a bona fide offering of goods or services.
For all the reasons mentioned above, the Panel takes the view that the Respondent has no rights or legitimate interests in the domain name <porschedesign.net>.
In consideration of the foregoing, the Panel is satisfied that the conditions under paragraph 4(a)(ii) of the Policy are satisfied.
C. Registered and Used in Bad Faith
In the Panel’s view, the Complainant satisfactorily proved that the domain name <porschedesign.net> was registered and is being used in bad faith.
As far as registration in bad faith is concerned, absent any contrary statement by the Respondent, the Panel takes the view that the Respondent knew or must have known of the famous trademark PORSCHE and the Complainant’s activity. The term PORSCHE is obviously a trademark: it is an invented word, which has no meaning. Accordingly, it seems difficult to believe that the Respondent registered a domain name identical to one of the Complainant’s well-known trademarks by chance. It cannot be concluded that the Respondent selected the domain name <porschedesign.net> simply by accident. On the contrary, it is highly likely that at the time of the registration of the domain name, the Respondent knew that the Complainant identified its line of prestigious and high quality consumer products with the trademark PORSCHE DESIGN (“The registration of a well-known trademark of which the Respondent must reasonably have been aware constitutes bad faith”. Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163).
In the absence of any response from the Respondent, the Panel finds that it is most likely that the Respondent registered the disputed domain name to unduly take advantage of the distinctive character and/or the reputation of the PORSCHE and PORSCHE DESIGN trademarks.
For the aforementioned reasons the Panel takes the view that the Complainant registered the domain name <porschedesign.net> in bad faith.
As far as use in bad faith is concerned, at the time of the filing of the Complaint and before that date, the domain name lead to a parking page with sponsoring links. Moreover a notice placed on the parking page stated that the domain name was for sale.
In the usual way, the Respondent earns commission whenever an Internet user visits his website and clicks on a sponsored link (see, e.g., Zinsser Co. Inc., Zinsser Brands, Co. v. Henry Tsung, WIPO Case No. D2006-0413). The Respondent did not contest the Complainant’s allegation that the Respondent is unduly deriving a financial benefit from web traffic diverted through the disputed domain name to the Respondent’s domain parking page and the sponsored links. Therefore and absent any contrary allegation by the Respondent, the Panel draws the conclusion that by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
Moreover, in the absence of any comment by the Respondent, the statement in the parking page that the domain name <porschedesign.net> is for sale is a clear indication that the Respondent registered the domain name primarily for the purpose of selling it, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name.
Based on the above considerations, the Panel concludes that the domain name <porschedesign.net> is being used in bad faith.
In the light of the foregoing, the Panel believes that the Complainant satisfactorily proved the third condition under paragraph 4(a)(iii) of the Policy.
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 <porschedesign.net> be transferred to the Complainant.
Dated: October 23, 2006