WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Dr. Ing. h.c. F. Porsche AG v. Dr. Alireza Fahimipour

Case No. DIR2006-0002

 

1. The Parties

The Complainant is Dr. Ing. h.c. F. Porsche AG, Stuttgart, Germany, represented by Lichtenstein, Körner & Partners, Germany.

The Respondent is Dr. Alireza Fahimipour, Isfahan, Islamic Republic of Iran.

 

2. The Domain Name and Registrar

The disputed domain name <porsche.ir> (the “Domain Name”) is registered with IRNIC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 1, 2006. On March 2, 2006, the Center transmitted by email to IRNIC a request for registrar verification in connection with the domain name at issue. On March 4, 2006, IRNIC 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 .IR Domain Name Dispute Resolution Policy (the “Policy”), the Rules for .IR Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .IR 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 March 8, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was March 28, 2006. Following receipt of a request from the Respondent, the Center extended the Response due date to April 6, 2006.

The Center appointed Tobias Zuberbühler as the sole panelist in this matter on April 21, 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.

The Respondent did not file a formal Response, but transferred to the Center a statement by email on March 27, 2006.

 

4. Factual Background

The Complainant is a German company and above all the manufacturer of sports cars, but as well of other goods and services under the name “Porsche”. The Complainant proved ownership of several relevant trademarks consisting of the word “Porsche” registered between 1953 and 2000. Furthermore, it is claimed that the Complainant’s products are distributed and shipped worldwide, including Iran, through a network of official dealers.

The Respondent is a medical doctor who, at the commencement of the proceedings, ran a website under the domain name <dr-fahimi.com> offering computer-related products and services (visited through “www.archive.org” on April 27, 2006). In addition, he offered on the mentioned website the domain name <audi.ir> for $10,000. According to the IRNIC Whois-Search conducted on April 27, 2006, the Respondent has registered several domain names including famous car companies’ names. The disputed Domain Name was registered by the Respondent on November 13, 2004.

 

5. Parties’ Contentions

A. Complainant

The Complainant objects to the use of the Domain Name by the Respondent and bases its Complaint on the following grounds:

1. The Domain Name is identical to the Complainant’s trademark and trade names.

2. The Respondent has no rights or legitimate interests in respect of the Domain Name as there is neither evidence of use or preparation of use of the Domain Name in connection with a bona fide offering or service nor is the Respondent commonly known by the Domain Name or has acquired a relevant trademark or service mark. The Respondent makes no legitimate non-commercial or fair use of the Domain Name.

3. The Domain Name was registered in bad faith for the purpose of selling, renting or otherwise transferring for valuable consideration in excess of the out-of-pocket expenses related to the Domain Name and preventing the Complainant from reflecting the mark in a corresponding domain name. The Domain Name is being used in bad faith as the passive holding of the disputed Domain Name fosters the aforementioned purposes.

B. Respondent

The Respondent claims that the registration was undertaken in accordance with all relevant rules and laws and the motivation of such conduct was the Respondent’s affection to the Complainant’s products, mainly its cars, and to introduce those to the Iranian people. The Respondent claims further that he holds an international trading license for import and export, and on these grounds he decided to act as prescribed, although he has not submitted any proof of such license. The Respondent states further to be in service of Porsche and promises to undertake nothing in this regard without prior coordination with Porsche.

 

6. Discussion and Findings

The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a) of the Rules). In this case, the Panel finds that the Center complied with all formalities and that the Complaint was properly notified to the Respondent.

Paragraph 4(a) of the Policy sets forth three elements that must be established by the Complainant to merit a finding that the Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are 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 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

In accordance with paragraph 4(a)(i) of the Policy the Domain Name is considered by this Panel to be identical to a trademark, i.e. PORSCHE, to which the Complainant has rights, since the Domain Name consists of the identical wording as the Complainant’s trademark.

Therefore, the Complainant has fulfilled the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

According to paragraph 4(c) of the Policy, the following circumstances can demonstrate that the Respondent has rights to or legitimate interests in the Domain Name:

(i) before any notice was given to the Respondent of the dispute, the Respondent used, or demonstrably made 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) the Respondent (as an individual, business, or other organization) has been commonly known by the Domain Name, even though it has not acquired any trademark or service mark rights; or

(iii) the Respondent is 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.

It is a consensus view of WIPO UDRP panelists (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, “http://www.wipo.int/amc/en/domains/search/overview/index.html”) that the overall burden of proof under paragraph 4(c) of the UDRP (which is identical to paragraph 4(c) of the Policy) rests with a complainant, which is required to establish that the respondent prima facie lacks any rights to, or legitimate interests in, a domain name. Once such prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name.

The Complainant asserts that none of the abovementioned circumstances (i)-(iii) are applicable to the Respondent and the Respondent has therefore no legitimate interest in or rights to the disputed Domain Name.

Based on the case file, the Panel finds that the Complainant has established a prima facie case as the Complainant has regularly less means to establish the negative proof than the Respondent has to evidence his rights and legitimate interests.

The Respondent contends that he had already started endorsing the name and products of the Complainant in Iran inter alia on grounds of an international import and export license before the Complaint was filed. Regarding the use of the disputed Domain Name in connection with the claimed endorsement, no such conduct can be observed since there is no corresponding website linked thereto. In addition, from the behavior of the Complainant, the Panel concludes that the Respondent is not an affiliate of the Complainant and the Respondent’s asserted activities are not coordinated with, and are undertaken without authorization by, the Complainant. The Panel has sufficient reason to assume that the Respondent is not an official dealer of the Complainant.

Hence, failing substantial evidence, this Panel cannot consider the Respondent’s contentions as demonstrating rights to or legitimate interests in the Domain Name.

In conclusion, the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

According to paragraph 4(b) of the Policy, a domain name has been used and registered in bad faith if:

(i) circumstances indicating that the respondent has registered and has 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 the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.

The Respondent has to date not offered the Domain Name on his website or otherwise for sale.

However, the passive holding of a domain name can be regarded as bad faith use when no possible use in good faith can be conceived, provided the complainant has a well known trademark (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

The Complainant has a well known trademark. Since the Respondent cannot possibly undertake any of his claimed activities without infringements of the Complainant’s and its official dealers’ rights, the Respondent’s contentions of his use in good faith remain unproved. This Panel thus concludes that the Respondent’s passive holding is a use in bad faith in accordance with paragraph 4(b) of the Policy, and that the Complainant has therefore fulfilled the requirements of paragraph 4(a)(iii) of the Policy.

Concerning paragraph 4(b)(ii) of the Policy, the Respondent registered several other domain names including famous trademarks of car manufacturers under the ccTLD of Iran. Such conduct is regarded by a consensus view of WIPO UDRP panelists (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, “http://www.wipo.int/amc/en/domains/search/overview/index.html”) as a pattern of conduct in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name. Despite the Respondent’s contentions to coordinate his activities with the Complainant and not to start any such activities unless authorized by the Complainant, the Complainant is prevented from reflecting its trademark in a corresponding domain name unless it buys the Domain Name from the Respondent.

The Panel therefore finds that the Domain Name has been registered and used in bad faith.

 

7. Decision

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.ir>, be transferred to the Complainant.


Tobias Zuberbühler
Sole Panelist

Dated: May 5, 2006