The Complainant is Dr. Ing. h.c. F. Porsche AG, with its registered office at Stuttgart, Germany (“Complainant”), represented by Lichtenstein, Körner & Partners, Germany.
The Respondent is Prima B.V., with its registered office at Amsterdam, the Netherlands.
The disputed domain name <porsche-design.nl> (the “Domain Name”) is registered with SIDN via SmartServer Technologies B.V.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 18, 2009 (e-mail) and August 20, 2009 (hard copy). On August 18, 2009, the Center transmitted by email to SIDN a request for registration verification in connection with the Domain Name. On August 19, 2009, SIDN transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center on August 21, 2009, that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on August 24, 2009. Complainant filed the Complaint in English. On August 21, 2009, the Center notified the Parties that, pursuant to Article 16 of the Regulations, and in the absence of an agreement between the parties, the language of the proceedings shall in principle be Dutch. The Center therefore requested Complainant to provide at least one of the following:
1. satisfactory evidence of an agreement between Complainant and Respondent to the effect that the proceedings should be in English; or
2. the Complaint translated in Dutch; or
3. a request for English to be the language of the administrative proceedings, including arguments and supporting material as to why it would be unreasonably onerous for the Complainant if the proceedings were to be conducted in Dutch.
Complainant requested the language of proceedings to be English since it is based in Germany and that translation would delay the proceedings and would be costly. Complainant further stated that the determination of English as the language of proceedings would not deprive Respondent of its right to defend itself as, according to Complainant, Respondent has sufficient knowledge of the English language, which would be apparent from Respondent's bilingual website. Respondent, although given the chance to do so by August 28, 2009, did not submit any reply on this matter. In accordance with article 16 of the Regulations, the Center provisionally decided to accept the Complaint as filed in the English language and a Response in either English or Dutch.
The Center verified that the Complaint, together with the amendment to the Complaint, satisfied the formal requirements of the Dispute Resolution Regulations for .nl Domain Names (the “Regulations”). In accordance with the Regulations, articles 5.1 and 15.5, the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 31, 2009. In accordance with the Regulations, article 7.1, the due date for Response was September 20, 2009. Respondent submitted several e-mails in reply to the Complaint. The Panelist shall consider such as Respondent's Response.
The Center appointed Willem J.H. Leppink as the panelist in this matter on September 29, 2009. The Panelist finds that the Panelist was properly appointed. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 8.2.
As mentioned above, Complainant filed the Complaint in the English language and argued that it has no knowledge of the Dutch language and requested the Panelist to decide that the proceedings shall be conducted in English.
Complainant has established that it has no knowledge of the Dutch language and that it would be unreasonably onerous for it to translate the Complaint into Dutch. Respondent did not reply to the Center's communication of August 21, 2009, nor did it express any objections to the Center's provisional acceptance of the Complaint in the English language. Following the Center's indication that it would accept the Response as filed in the English or Dutch language, Respondent submitted all its communications in Dutch. In light of the above the Panelist decides that the language of proceedings shall be English and accepts the Center's provisional determinations.
Complainant is a company domiciled in Germany. All over the world, Complainant is famous for the manufacturing of sport cars under the trademark PORSCHE. Besides the manufacturing of sports cars Complainant has exclusively licensed its trade mark PORSCHE DESIGN to Porsche Design Management GmbH & Co KG, Austria. This company, owned and operated by members of the Porsche group of companies is one of the world's leading and prestigious designers and producers of high quality consumer products, namely watches, writing tools, leatherwear, wallets, organizers etc. The website of Porsche Design is at “www.porsche-design.com”.
Complainant has claimed to hold rights in the following trade mark registrations which would be valid in the Benelux:
- CTM registration number 73098 for the word mark PORSCHE, filed on April 1, 1996;
- International registration number 179928 for the design mark PORSCHE, filed on October 8, 1954;
- International registration number 456717 for the word mark PORSCHE DESIGN, filed on July 29, 1980;
- International registration number 461505 for the word mark PORSCHE DESIGN, filed on June 3, 1981; and
- International registration number 473561 for the design mark PORSCHE, filed on September 29, 1982.
Complainant has submitted copies of these registrations.
Respondent is a company with limited liability. Respondent has a web shop through which it sells office supplies, presents and organizers. The main website of Respondent is “www.intopaper.com”. Respondent uses the Domain Name in such way that the Domain Name directs to a website identical to “www.intopaper.com.”
On February 23, 2007, Complainant sent a cease and desist letter to Respondent, but Respondent has never answered and continues its use of the Domain Name.
According to the publicly available WhoIs information of SIDN the Domain Name was registered on September 28, 2002 by Respondent.
Complainant has claimed to hold the rights in the trade marks as mentioned in paragraph 4 above.
Complainant stated that the second-level domain of the Domain Name is identical to the work mark PORSCHE DESIGN. The only difference is a hyphen which is universally known as the replacement for the blank between the two words. According to Complaint the hyphen is used in domain names because, for technical reasons, blanks can not be reflected in domain names.
Subsequently, Complainant argued that the Domain Name is also confusingly similar to the several word marks PORSCHE because the trade mark PORSCHE is entirely incorporated into the Domain Name and the added word “design” is descriptive.
As mentioned in paragraph 4 above, Respondent has established a commercial website at “www.porsche-design.nl”. Complainant stated that on the entry page of such website the logo “intopaper.com” is prominently displayed. The design and content of this website and the main website of Respondent (“www.intopaper.com”) are according to Complainant identical.
Complainant alleges that the website linked to the Domain Name offers an online shop with a range of products that overlap with the products offered by Porsche Design. Respondent offers products from different manufacturers, including direct competitors of Porsche Design.
Complainant argued that there is also a product group, on the website, under the headline “Porsche Design” with various subchapters to the original Porsche Design product range, but in all of these subchapters there is just a photo of an original product with the remark “Geen producten gevonden” (which means “No products found” in Dutch), with the only exception of some lighters at “Porsche Design rookproducten”. Apparently, Complainant states, the Porsche Design brand is used for the only purpose of attracting potential customers who are then redirected to the other products.
Complainant stated furthermore that there has never been a business relationship between the parties or Complainant's licensee and that Respondent is not an authorized dealer of Complainant.
Complainant stated that in order for Respondent to claim rights or legitimate interests administrative panels have in their majority applied the test of in Oki Data Americas, Inc. v. ASD, Inc. WIPO Case No. D2001-0903: “To be “bona fide”, the offering must meet several requirements. Those include, at the minimum the following:
- Respondent must actually be offering the goods or services at issue (…) [;]
- Respondent must use the site to sell only the trademarked goods; otherwise it could be using the trade mark to bait Internet users and the switch them to other goods (…) [;]
- The site must accurately disclose the (…) relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact it is only one of many sales agents (…) [; and]
- (…) Respondent must not try to corner the market in all domain names, thus depriving the trade mark owner of reflecting its own mark in a domain name.”
This test has also been applied by administrative panels in decisions issued under the Regulations, e.g. Aktiebolaget Electrolux v. Beuk Horeca B.V., WIPO Case No. DNL2008-0050 and General Electric Company v. V.O.F. Aquacombi, WIPO Case No. DNL2008-0042.
Complainant argued that Respondent fails the test in at least three counts.
First, the actual offering of original products is confined to a rather insignificant type of products (lighters) which does not warrant registering and using the Domain Name. Secondly, Respondent offers competitor's products rather than dedicating the website exclusively to products from Complainant or its licensee. Finally, there is no disclosure regarding the relationship between the parties.
Complainant states that Respondent makes the public believe, by fully incorporating Complainant's name and trademark into the Domain Name that on the website linked to the Domain Name official information and offers from the Complainant, its licensee or an official dealer can be accessed. This is not a legitimate use under the principle of exhaustion as interpreted by the European Court of Justice. Complainant refers in this regard to the Judgment of the European Court of Justice of February 23, 1999 (BMW/Deenik).
Therefore, Complainant argues, Respondent lacks a legitimate interest in owning or using the Domain Name.
Complainant argued that it can be stated that this is a case of bad faith as exemplified in article 3.2 sub d of the Regulations.
In Complainant's opinion the Domain Name is intended to redirect potential customers interested in Porsche Design products to competitor's products, thus exploiting the name and trademark of Complainant for commercial gain while at the same time damaging Complainant and its licensee by transferring potential customers to competitors. Therefore, according to Complainant, Respondent has been acting in bad faith.
Respondent has only sent some emails in the Dutch language. As Respondent has not submitted an official Response, the Panelist shall regard the e-mail communications of Respondent as such.
In its emails Respondent stated that it is willing to sell the Domain Name for the amount of EUR 2,750. Furthermore, Respondent argued that it has been for several years the exclusive importer and distributor of Faber Castell products from Germany. According to Respondent Faber Castell is the producer of Porsche Design pens. Respondent states that it represented such Porsche Design collection for several years.
According to article 2.1 of the Regulations, the requested remedy shall be granted if a complainant asserts and establishes each of the following:
a. that the domain name is identical or confusingly similar to
I. a trade mark, or trade name, protected under Dutch law in which the complainant has rights;
II. a personal name registered in a Dutch municipal register of persons, or a name of a Dutch public legal entity or a name of an association or foundation located in the Netherlands under which the complainant undertakes public activities on a permanent basis; and
b. that respondent has no rights or legitimate interests in the domain name; and
c. that the domain name has been registered or is being used in bad faith.
Complainant indicated in the Complaint that it relies on its trademark registrations. The submitted copies of the trademark registrations substantiate Complainant's claimed rights to the PORSCHE and PORSCHE DESIGN trademarks.
The Domain Name contains Complainant's PORSCHE DESIGN trademark, with the distinction that a hyphen is placed between “porsche” and “design”. Therefore the Panelist finds that the Domain Name is at least confusingly similar to Complainant's trade mark (see also Société Air France v. A Coppola, WIPO Case No. DNL2009-0001).
The Panelist finds therefore that Complainant has complied with article 2.1 sub a of the Regulations.
According to article 2.1 sub b of the Regulations a complainant must demonstrate that the respondent has no rights or legitimate interests in the domain name. This condition is met if a complainant makes a prima facie case that the respondent has no rights or legitimate interests and the respondent fails to rebut that showing by providing evidence of for example any of the three circumstances mentioned in article 3.1 of the Regulations.
Complainant has established that Respondent does not make a legitimate use of the Domain Name. To the contrary, Respondent uses the Domain Name to direct Internet users to a website nearly identical to its other website at “www.intopaper.com”. On such website Internet users can buy several products, not only from Complainant or Porsche Design, but also from competitors of these entities. Complainant has argued that Respondent is neither a licensee nor an authorized dealer of Complainant. The use of the Domain Name by Respondent cannot constitute a bona fide offering of goods and services, nor a non-commercial or fair use of the Domain Name.
Respondent has not argued that it is commonly known by the Domain Name, nor that it is making a legitimate non-commercial use of the Domain Name. Respondent only stated that it was the exclusive agent of Faber Castell, which according to Respondent is the producer of Porsche Design products.
As Respondent is not commonly known by the Domain Name, nor making a legitimate non-commercial use of the Domain Name and it only uses the Domain Name to direct Internet users to a website nearly identical to its other website “www.intopaper.com”, the Panelist finds that Respondent has not established any rights or legitimate interests in the Domain Name. Also the very limited offering of Porsche Design products (only some lighters) does not create a legitimate interest.
For these reasons, the Panelist finds that Complainant has satisfied article 2.1 sub b of the Regulations.
Pursuant to article 3.1 sub c of the Regulations, a complainant must demonstrate that the domain name has been registered and/or is being used in bad faith.
Complainant has indicated that this is a case of bad faith as exemplified in article 3.2 sub d of the Regulations.
With respect to article 3.2 sub d of the Regulations the Domain Name is being used for commercial gain as Respondent has the intention to mislead the Internet users as they are directed to a website where they can buy products of competitors of Complainant. Respondent is exploiting the name and trade marks of Complainant for commercial gain while at the same time damaging Complainant and its licensee by transferring potential customers to competitors of Complainant.
In its e-mail communications Respondent did not rebut Complainant's allegations that Respondent uses the Domain Name in bad faith. Respondent primarily indicated that it is willing to sell the Domain Name. Taking into account the fact that Respondent has not successfully addressed Complainant's contentions, the Panelist, on the basis of the evidence submitted by Complainant and the arguments of Complainant, is satisfied that the Domain Name is being used in bad faith.
The Panelist thus finds that Complainant has satisfied article 2.1 sub c of the Regulations.
For all the foregoing reasons, in accordance with articles 1 and 13 of the Regulations, the Panel orders that the domain name <porsche-design.nl> be transferred to Complainant.
Willem J.H. Leppink
Dated: October 13, 2009