The Complainant is Dr. Ing. h.c. F. Porsche, of Germany, represented by Lichtenstein, Körner & Partners, Germany.
The Respondent is Georg Kohler, of Brazil, represented by Mr. Bernard Van Reepinghen, Belgium.
The disputed domain name <porsche.me> (“Disputed Domain Name”) is registered with Instra Corporation Pty Ltd.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 14, 2008. On August 15, 2008, the Center transmitted by email to Instra Corporation Pty Ltd. a request for registrar verification in connection with the disputed domain name. On August 29, 2008, Instra Corporation Pty Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), as approved by the doMEn d.o.o (“doMEn”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), as approved by the doMEn, 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 10, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 30, 2008. The Response was filed with the Center on September 29, 2008.
The Center appointed Alistair Payne as the sole panelist in this matter on October 8, 2008. 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 Complainant is a maker of sports cars and owner of numerous trademarks incorporating PORSCHE including the following registrations:
1. German Trademark No. 643 195, reg. August 26, 1953 (cars and parts thereof);
2. International Registration No. 179 928, based on the foregoing, reg. October 8, 1954, including Montenegro;
3. German Trademark No. 39532382.7, reg. February 29, 1996;
4. International Registration No. 459706, reg. February 24, 1981, including Montenegro;
5. International Registration No. 473 561, reg. September 29, 1982 including Montenegro;
6. US Federal trademark No. 71-668978, reg. October 1, 1956 (cars and parts thereof;
7. European Trademark Registration No. 000073098, priority date April 1, 1996, reg. December 12, 2000;
8. Brazilian Trademark Registration No. 0036269, priority date March 9, 1954.
By letter dated August 12, 2008, the Complainant's legal counsel wrote to the Respondent setting out the Complainant's concerns in relation to the Disputed Domain Name.
The Respondent is Georg Kohler. The Respondent obtained the disputed domain name <porsche.me> on August 12, 2008.
The Complainant asserts that it has been a maker of sports cars for more than 60 years, utilizing PORSCHE as the prominent and distinctive part in its trade name and it owns numerous trademarks consisting of or incorporating PORSCHE.
The Complainant submits that it operates its principal website at “www.porsche.com” which opens a gate to nationalized websites, located at various sub-domains or ccTLDs, such as <porsche.fr> for France, <porsche.nl> for the Netherlands, <porsche.ca> for Canada, or <porsche.ru> for the Russian Federation. These various domain names indicate content specifically made for audiences from the various countries.
The Complainant submits that the Disputed Domain Name is identical to its mark and that the top level domain does not constitute a distinguishing element.
The Complainant argues that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant asserts that there has never been a business relationship between the parties and that the Respondent is not commonly known by the Disputed Domain Name. The Complainant is of the belief that the Respondent has registered domain names (including the Disputed Domain Name) fully incorporating the trademarks and names of famous car makers in order to sell them to the various trademark owners.
The Complainant asserts that the Respondent acted in bad faith because it knew of the Complainant's trademark and registered the Disputed Domain Name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant for valuable consideration in excess of documented out-of-pocket costs directly related to the Disputed Domain Name.
The Respondent submits that it is up to the Complainant to show that there is a positive observation of the likelihood of confusion, which they have not done in this case. The Respondent argues that there is no risk of confusion between the Disputed Domain Name <porsche.me> and the trademark of the Complainant as the acronyms and the logos, which the Respondent claims form an integral part of the Complainant's trademark, appear nowhere on it's site.
The Respondent submits that it has acquired the Disputed Domain Name to use it for a legitimate and fair noncommercial purpose without the intention of attracting internet users to a website or other on-line area belonging to it.
The Respondent asserts that it did not look for consideration in excess of the amount paid at auction for the Disputed Domain Name.
If the Complainant is to succeed, it must prove each of the three elements referred to in paragraph 4(a) of the Policy, namely that:
(i) the Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
The Panel will proceed to establish whether the Complainant has discharged the burden of proof in respect of each of the three elements referred to in paragraph 4(a) of the Policy.
The Complainant has shown in evidence that he is the proprietor of the registered trademark PORSCHE in Germany, the United States of America, Brazil and the European Union, and also holds international registrations for the mark PORSCHE.
The Disputed Domain Name differs from the trademark PORSCHE only by the addition of the country code top level domain “.me”. In Belo Corp v. George Latimer, WIPO Case No. D2002-0329 the Panel held that;
“it is well established that the generic top level domain, in this case ‘.com' must be excluded from consideration as being a generic or functional component of the Domain Name”
Therefore, in the Panel's view, the Disputed Domain Name is confusingly similar to the Complainant's mark for the purposes of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] 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) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) Where [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 the Complainant's burden to prove that Respondent lacks rights or a legitimate interest. Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270. Because it is difficult to produce evidence to support a negative statement, the threshold for the Complainant to prove a lack of legitimate interest is low. Once a prima facie case is shown the burden of proof then shifts to the Respondent who must demonstrate its rights or legitimate interests to the Panel.
It is generally regarded as sufficient prima facie proof, for a complainant to show that the disputed domain name is identical or confusingly similar to its mark, that the respondent is not commonly known by the disputed domain name, and that the complainant has not authorized the respondent to use its mark (or an expression which is confusingly similar to its mark), whether in the disputed domain name or otherwise. Roust Trading Limited v. AMG LLC, WIPO Case No. D2007-1857. In this case, the Panel has found that the Disputed Domain Name is confusingly similar to the mark in which the Complainant has rights. There is no suggestion of the Respondent, or any business or organization operated by the Respondent, being commonly known by the Domain Name and the Respondent is not affiliated with the Complainant and has never been authorized by the Complainant to use the Complainant's trademark or any trademark confusingly similar thereto. In addition there is no evidence of use by the Respondent of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services.
In the Panel's opinion the Complainant in this proceeding has demonstrated a prima facie case. The question for the Panel to now determine is whether the Respondent can demonstrate rights or legitimate interests in the Disputed Domain Name.
The Respondent argues that it is using the site for a legitimate and fair non-commercial purpose, to provide information about PORSCHE to those interested. The Respondent contends that it plans to use the website as a non commercial fan club site.
The basis for a case under 4(c)(iii) requires a showing that the Respondent is making a legitimate non-commercial or fair use of the domain name without intent for commercial gain. UDRP panels have come to different views as to whether a fan site can constitute a right or legitimate interest in a disputed domain name. The first view is that an active and clearly non-commercial fan site may have rights and legitimate interests in the domain name that includes the complainant's trademark. The site should be noncommercial and clearly distinctive from any official site: Estate of Gary Jennings and Joyce O. Servis v. Submachine and Joe Ross WIPO Case No. D2001-1042. The second view is that the respondent does not have rights to express its view, even if positive, on an individual or entity by using a confusingly similar domain name, as the respondent is misrepresenting itself as being that individual or entity. In particular, where the domain name is identical to the trademark, the respondent, in its actions, prevents the trademark holder from exercising the rights to its mark and managing its presence on the Internet. David Gilmour, David Gilmour Music Limited and David Gilmour Music Overseas Limited v. Ermanno Cenicolla, WIPO Case No. D2000-1459.
This Panel is of the opinion that there is merit in the view that a domain name which is identical to the Complainant's trademark should necessarily not qualify as a “legitimate non-commercial or fair use” under paragraph 4(c)(iii) of the Policy. This is because there is an immediate potential for false association with the trademark owner and a degree of initial confusion which is at the top end of the spectrum. To hold otherwise may also prevent a trademark owner from validly acquiring an identical domain name which it would otherwise be entitled to in accordance with the Policy's aim of preventing cybersquatting, minimising confusion with established trademarks and helping to assure bona fide trademark owners' rights: Covance, Inc and Covance Laboratories Ltd v. The Covance Campaign, WIPO Case No. D2004-0206.
In any event, the Respondent sought to sell the Disputed Domain Name to the Complainant on receipt of a cease and desist letter. It was held by the Panel in Telstra Corporation Limited v Mr. Jeon WIPO Case No. D2001-1161 that the Respondent's attempts to sell the domain name to the Complainant could not constitute a legitimate or fair use of the domain name. The Panel is of the opinion that if the Respondent was truly making a legitimate non-commercial use he would not be seeking to make money from the sale of the domain name to the Complainant. Helen Fielding v. Anthony Corbert aka Anthony Corbett WIPO Case No. D2000-1000 (where the panel held that the respondent is not making a legitimate non-commercial or fair use of the disputed domain name, and has not established a legitimate non-commercial or fair use of Complainant's mark where the Respondent of the disputed domain name offered it for sale to Complainant at a substantial price). In this case the tenor of the Respondent's email is suggestive of the substance of the Respondent's investors which is not consistent with the bona fide reimbursement of costs and a fair intention to use the Disputed Domain Name as a non-commercial fan club site.
Therefore, the Complainant has, in the Panel's view satisfied paragraph 4(a)(ii) of the Policy.
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith.
Those circumstances are:
(i) circumstances indicating that [the respondent has] registered or 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 [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 [the respondent's] 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 [the respondent's] website or location.
The Complainant contends that the Disputed Domain Name was registered or acquired in bad faith and primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to Complainant or to a competitor of Complainant, for valuable consideration in excess of Respondent's documented out-of-pocket costs directly related to the domain name.
The Respondent was well aware of the Complainant's mark PORSCHE at the time he registered the Disputed Domain Name; it intimated use as a “fan” site. The Respondent approached the Complainant attempting to sell the domain name to it after receiving a cease and desist letter from the Complainant's legal representative.
The Panel has little difficulty in concluding that the Disputed Domain Name was registered primarily for the purpose of selling it to the Complainant. The Complainant is the owner of the trademark to which the Panel has found that the Disputed Domain Name is confusingly similar, and the only remaining matter under paragraph 4(b)(i) of the Policy is whether the Respondent has sought to obtain a valuable consideration in excess of his documented out-of-pocket costs directly related to the Disputed Domain Name.
The Respondent made it clear in his email that he had in mind more than the simple recovery of his out-of-pocket expenses. The Respondent in seeking an offer they could both “live with” commented on the size and influence of the Complainant, it can be inferred from this statement that the Respondent was of the belief that the Complainant was capable of paying a sum in excess of the expenses he incurred in purchasing the Disputed Domain Name. The Panel is of the opinion that it is unlikely that the Respondent would have invested a considerable sum of money in purchasing the Disputed Domain Name at auction if his purpose was solely to set up a noncommercial site to provide information to those interested in PORSCHE. The Panel infers that the Respondent registered the Disputed Domain Name because he recognised the value of a domain name incorporating the Complainant's mark and primarily for the purpose of selling it to the Complainant or to a competitor of the Complainant. Registration of the Disputed Domain Name was an opportunistic act from which the Respondent thought he could gain.
This finding is supported by the fact that the Respondent has registered domain names which correspond to other well known brands such as ASTON MARTIN, JAGUAR, TOYOTA, MITSUBISHI, BENTLEY and FIAT. In Terroni Inc. v. Gioacchino Zerbo, WIPO Case No. D2008-0666 the Panel found that registering domains which correspond to some of the most well known brands in the world was “behaviour which has been held in numerous decisions to be indicative of bad faith”.
In the case of Effens AG v. Weitner AG, WIPO Case No. D2000-1433 the Respondent registered at least three domain names identical to protected trademarks of third parties. The Panelist in that case considered that this number was sufficient to find that Respondent engaged in a pattern of conduct. The Respondent in this case has registered at least 6 domain names identical to protected trademarks of third parties which is sufficient to show bad faith under paragraph 4(b)(ii) of the Policy
For the reasons stated above, the Panel is satisfied that the Disputed Domain Name was registered and used in bad faith. As such, paragraph 4(a)(iii) of the Policy is satisfied
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.me> be transferred to the Complainant.
Dated: October 24, 2008