World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Dr. Ing. h.c. F. Porsche AG v. Stuart McKay Prestige Cars, Prestige Cars, Lawrence Creative

Case No. D2012-0394

Dr. Ing. H.c. F. Porsche AG v. Stuart McKay aka Prestige Cars

Case No. D2012-0477

1. The Parties

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

The Respondents are Stuart McKay aka Prestige Cars of Inverkip, Scotland, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), Prestige Cars of Glasgow, Scotland, United Kingdom, Stuart McKay Prestige Cars of Inverkip, Scotland, United Kingdom, and Lawrence Creative of Glasgow, Scotland, United Kingdom.

2. The Domain Names and Registrar

The disputed domain names <glenvarigillporsche.com>, <newboxster.com>, <newcayenne.com>, <newcayman.com>, <porschecentres.com>, <porscheengland.com>, <porscheeu.com>, <porscheeurope.com>, <porschegb.com>, <porscheinverness.com>, <porschenew.com>, <porscheshowrooms.com>, and <scotlandporsche.com> are registered with Tucows Inc.

3. Procedural History

The Complaint involving the disputed domain names <glenvarigillporsche.com>, <newboxster.com>, <newcayenne.com>, <newcayman.com>, <porschecentres.com>, <porscheengland.com>, <porscheeu.com>, <porschegb.com>, <porscheinverness.com>, <porschenew.com>, <porscheshowrooms.com>, and <scotlandporsche.com> was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 28, 2012. On February 29, 2012, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain names. On February 29, 2012, Tucows Inc. transmitted by email to the Center its verification response confirming that the Respondents are 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” or “UDRP”), 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 March 8, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 28, 2012.

A Complaint involving the disputed domain name <porscheeurope.com> was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 9, 2012. On March 9, 2012, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On March 9, 2012, Tucows Inc. 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 UDRP, the Rules, and 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 16, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 5, 2012.

On March 16, 2012, the Center sent a communication by email to the parties which stated:

“The Center notes the Request for Consolidation (in Section V (b)(1) of the attached Complaint) of administrative proceeding D0212-0477 (<porscheeurope.com>) with administrative proceeding D2012-0394 (<glenvarigillporsche.com> et al). Additionally, we note that the Parties to the two administrative proceedings appear to be the same.

As the proceeding in D2012-0394 (<glenvarigillporsche.com> et al.) has already commenced, the Center will proceed to administer both disputes as distinct disputes with distinct timelines under each.

However, in whichever of these two cases a Panel would be first appointed, the Center will put before that Panel the Complainant’s Request for Consolidation of the two proceedings. Accordingly, it is to the discretion of the Panel (when appointed) to determine whether to consolidate the two administrative proceedings, and/or whether to order further procedural steps, if any.

Pending the Panel’s (when appointed) consideration of the Request for Consolidation of the two proceedings, applicable fees (for a single member Panel as the Complainant has elected, or for a three member Panel should the Respondent so elect) for both proceedings are payable in full. Further, we note that the Respondent is invited to submit a Response in each of the two administrative proceedings – although each Response may be identical”.

An email communication was received by the Center from the Respondent on March 21, 2012, in which reference was made to the two cases.

The Center sent an email to Respondent on March 21, 2012, requesting to confirm whether the Respondent’s email communication should have been regarded as the Respondent’s complete Response for both proceedings and indicating that, in the absence of such confirmation or of further communication from the Respondent by the due date for Response (March 28, 2012, for the proceeding D2012-0394 and April 5, 2012 for the proceeding D2012-0477), the Center would have regarded the Respondent’s email communication as its Response and would have proceeded to appoint the Panel.

The Center also indicated that it had updated its records with the contact information provided in the Respondent’s email and noted that all future case-related communication would be sent electronically.

No further communication was received by the Center within the due date for Response. The Center appointed Luca Barbero as the sole panelist in this matters on April 12, 2012. 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.

Preliminary issue: consolidation of multiple proceedings and domain names

The disputed domain names <glenvarigillporsche.com>, <newboxster.com>, <newcayenne.com>, <newcayman.com>, <porscheengland.com>, <porscheeu.com>, <porscheinverness.com>, <porschenew.com>, <porscheshowrooms.com>, and <scotlandporsche.com>, subject to the administrative proceeding No. D2012-0394, are registered in the name of the Respondent Prestige Cars. The disputed domain names <porschegb.com> and <porscheeurope.com>, subject to the administrative proceeding Nos. D2012-0394 and D2012-0477, respectively, are registered in the name of the Respondent Stuart McKay Prestige Cars and Stuart McKay aka Prestige Cars, respectively. The disputed domain name <porschecentres.com>, subject to the administrative proceeding no. D2012-0394, is registered in the name of the Respondent Lawrence Creative, a web agency which is also indicated as administrative and technical contact of all of the other disputed domain names.

The disputed domain names are all pointed to a web site, which promotes the activity of S M Prestige Cars owned by the Respondent Stuart McKay, an independent car dealer located in Glasgow. The disputed domain names and other “.uk” domain names containing the trademark PORSCHE are offered for sale on the website “http://www.stuartmackayprestigecars.com/newsshow.php?uniqueID=20”, where it is stated:

“DOMAIN NAMES FOR SALE www.porscheGB.com / also / www.porschecentres.com www.newcayman.co.uk / www.newcayman.com / www.new911.co.uk / www.newcayenne.com / www.newboxster.com / www.glenvarigillporsche.co.uk / www.glenvarigillporsche.com / www.porscheengland.co.uk / www.porscheengland.com / www.porschenew.co.uk / www.porschenew.com / www.porscheused.co.uk / porscheshowrooms.co.uk / www.porscheshowrooms.com / www.porscheeu.co.uk / www.porscheeu.com / www.porscheeurope.co.uk / www.porscheeurope.com / www.porscheinverness.co.uk / www.porscheinverness.com and many many more !!!!!!!!!!! Call Stuart on .....[omitted tel.number].”

In light of the fact that the disputed domain name <porschecentres.com> is mentioned among the domain names offered for sale by the Respondent Stuart McKay on its web site, and is pointed to the very same web site as the other disputed domain names, it is clear to the Panel that the beneficial owner of all the disputed domain names is Stuart McKay, also known as Prestige Cars.

As the two administrative proceedings WIPO Case No. D2012-0394 and WIPO Case No. D2012-0477 involve the same Complainant against the same Respondent, coherence and expedition of the proceedings require that “both of them be resolved through one single decision” (as ruled, amongst others, in Aventis, Aventis Pharma SA. v. John Smith, WIPO Case No. D2004-0565 and WIPO Case No. D2004-0624).

4. Factual Background

The Complainant has been manufacturing for 80 years well-known sports cars under the trademark PORSCHE and its various car models, in particular the 911, BOXSTER, CAYENNE and CAYMAN, are distributed worldwide through a network of official dealers. The names of these models are likewise well known and protected as trademarks around the world.

The Complainant has provided evidence of a number of trademark registrations for PORSCHE, in many countries, covering a wide range of goods and services in connection with automobiles and parts thereof, including, for PORSCHE, the Community Trademark Registration No. 73098, filed on April 1, 1996, in classes 3, 8, 9, 12, 14, 16, 18, 21, 24, 25, 28, 34, 35, 36, 37, 39 and 42; the International Trademark Registration Nos. 179928, registered on October 8, 1954, in classes 7, 8 and 12; 459706, registered on February 24, 1981, in classes 36, 37, 39 and 42; and 473561, registered on September 29, 1982, in classes 3, 8, 9, 14, 16, 18, 21, 24, 25, 28, 33 and 34; United Kingdom Trademark Registration No. 729217, registered on April 14, 1954, in class 12; and United States Trademark Registration No. 0618933, registered on January 10, 1956, in class 12.

The Complainant has also provided evidence of ownership, amongst others, of the following trademark registrations:

- Community Trademark Registration No. 21089 for 911, filed on April 1, 1996, in class 12;

- Community Trademark Registration No. 1206085 for 911, filed June 14, 1999, in classes 3, 8, 9, 14, 16, 18, 21, 24, 25, 28, 33, 34, 35, 36, 37, 39 and 42;

- Community Trademark Registration No. 73155 for BOXSTER, filed on March 3, 1996, in classes 3, 8, 9, 12, 14, 16, 18, 24, 25, 28, 33, 34, 36, 37, 39 and 42;

- International Trademark Registration No. 604881 for BOXSTER, registered on June 11, 1993, in class 12;

- Community Trademark Registration No. 1393255 for CAYENNE, filed on November 18, 1999, in classes3, 8, 9, 12, 14, 16, 18, 21, 24, 25, 26, 28, 33, 34, 35, 36, 37, 39 and 42;

- International Trademark Registration No. 730258 for CAYENNE, registered on November 12, 1999, in classes 3, 8, 9, 12, 14, 16, 18, 21, 24, 25, 26, 28, 33, 34, 36, 37, 39, and 42;

- Community Trademark Registration No. 3915766 for CAYMAN, filed on July 6, 2004 in classes 3, 9, 12, 14, 16, 18, 25, 28 and 37;

- International Trademark Registration No. 862335 for CAYMAN, registered on July 8, 2004, in classes 3, 9, 12, 14, 16, 18, 21, 25, 28, 34 and 37.

The Complainant operates its web site at “www.porsche.com”.

The disputed domain names were registered between June 17, 2005 and July 20, 2007.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain names are confusingly similar to the trade name and various trademarks owned by the Complainant, which are embodied in their entirety in the disputed domain names, with the mere addition of descriptive elements that suggest an official dealership authorized by the Complainant.

With reference to right or legitimate interest in the disputed domain names, the Complainant states that the Respondents do not have rights or legitimate interests in respect of the disputed domain names, that they are not an authorized dealer of the Complainant’s products or a licensee of its trademarks. The Complainant also points out that the Respondents are not commonly known by any of the disputed domain names and that the Respondents do not use them in connection with a bona fide offering of goods or services or for a noncommercial or fair use, since the Respondent Stuart McKay has been using them to attract users to his commercial web site and is offering them for sale, while Respondent Lawrence Creative has rented or otherwise allowed the other Respondent Stuart McKay to pursue these purposes.

With reference to bad faith at the time of the registration of the disputed domain names, the Complainant states that both respondents, the first as an unauthorized dealer and the second as his web agency, were aware of the Complainant’s trademark rights, but decided to exploit the commercial value embedded in these trademarks for their commercial benefit.

The Complainant also states that the Respondents intentionally attempted to attract, for commercial gain, Internet users to the corresponding web sites according to paragraph 4(b)(iv) of the Policy and that the fact that the disputed domain names are used by a dealer of Porsche cars does not legitimize the Respondents’ conduct. The Complainant contends that the dealer Prestige Cars would not pass the test that several Administrative Panels have adopted to determine whether a respondent who actually offers products made by the trademark owner acts in good faith according to the criteria provided in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, as the Respondents’ web site is used to offer other than the trademarked cars and does not accurately disclose the web site holder’s relationship with the trademark owner.

The Complainant also points out that the fact that the disputed domain names are offered for sale constitutes an additional evidence of bad faith.

B. Respondent

The Respondent Stuart McKay states that he purchased the disputed domain names several years ago to help promoting traffic to his used car web site and showroom and that, due to the fact that he was no longer requiring them since his activity was unfortunately closed, he decided, under advice of the supplier of the disputed domain names, to offer them for sale to the Complainant before offering them “around the ‘specialist’ network”.

6. Discussion and Findings

According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the disputed domain names registered by the Respondents are identical or confusingly similar to a trademark or a service in which the Complainant has rights; and

(ii) that the Respondents have no rights or legitimate interests in respect of the disputed domain names; and

(iii) that the disputed domain names have been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has provided evidence of ownership of, among others, trademark registrations for PORSCHE, CAYENNE, BOXSTER, and CAYMAN.

The Panel finds that the disputed domain names are confusingly similar to the trademarks owned by the Complainant. Pursuant to a number of prior decisions rendered under the Policy, the addition of descriptive terms to a trademark is not a distinguishing feature.

The addition of the terms “showrooms”, “glenvarigill”, “centres”, “new” and of the geographical indications “England”, “eu”, “Europe”, “gb”, “Scotland” and “Inverness” does not exclude the confusion similarity between the disputed domain names and the Complainant’s trademark.

Among the prior UDRP decisions in which it was found that the addition of descriptive terms to a trademark is not a distinguishing feature, see, inter alia, Barry D. Sears, Ph.D. v. YY / Yi Yanlin, WIPO Case No. D2007-0286 (“diet” added to the ZONE mark); Fry’s Electronics, Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1435 (“electronic” added to the FRY mark); Wal-Mart Stores, Inc. v. Henry Chan, WIPO Case No. D2004-0056 (“chase”, “girlsof”, “jobsat”, “sams”, “application”, “blackfriday”, “blitz”, “books”, “career(s)”, “check”, “flw”, “foundation”, “games”, “mart”, “photostudio”, “pictures”, “portrait”, “portraitstudio(s)”, “registry”, “retaillink” and “wire” added to the WALMART mark); PepsiCo, Inc. v. Henry Chan, WIPO Case No. D2004-0033 (“chart”, “miusic”, “earena”, “sweep”, “nfl” and “coliseum” added to the PEPSI mark); International Organization for Standardization ISO v. Quality Practitioners Institute and Website Pros, Inc. and Quality, WIPO Case No. D2005-1028 (“net” and “training” added to the ISO mark); Banca Intesa S.p.A v. Roshan Wickramaratna, WIPO Case No. D2006-0215 (“online” added to BANCAINTESA mark); Groupe Auchan v. Jakub Kamma, WIPO Case No. D2007-0565 (addition of the term “software” to the trademark AUCHAN).

In view of the above, the Panel finds that the Complainant has proven that the disputed domain names are confusingly similar to the trademarks in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant must show that the Respondents have no rights or legitimate interests in respect of the disputed domain names. The Respondents may establish a right or legitimate interest in the disputed domain names by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

“(i) before any notice to you of the dispute, your 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

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial 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 well-established that the burden of proof lies with a complainant. However, satisfying the burden of proving a lack of a respondent’s rights or legitimate interests in respect of the domain names according to paragraph 4(a)(ii) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.

Accordingly, in line with prior UDRP decisions, it is sufficient that the Complainant show a prima facie case that the Respondents lack rights or legitimate interests in the disputed domain names in order to shift the burden of production to the Respondents. If the Respondents fail to demonstrate rights or legitimate interests in the disputed domain names in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; MetAmerica Mortgage Bankers v. Whois ID Theft Protection c/o Domain Admin, NAF Claim No. FA0611000852581).

In the case at hand, the Complainant has submitted that the Respondents are not an authorized dealer of the Complainant’s products or a licensee of its trademarks. On the other hand, the Respondent Stuart McKay, in its response, has not submitted that the Complainant has expressly permitted Respondent to use its trademarks or register domain names including the Complainant’s trademarks but has only stated that the disputed domain names were registered to help promoting its used car web site and showroom.

The Panel notes that the fact that the Respondent Stuart McKay has been reselling also the Complainant’s cars is not sufficient to establish rights or a legitimate interest since a dealer, agent or distributor of (among others) products of the trademark owner does not per se have a right to a domain name which includes that trademark. See, along these lines, Nokia Corporation v. David Wills, WIPO Case No. DWS2001-0004.

With reference to the issue of resellers or distributors of trademarked goods or services claiming rights or legitimate interests in domain names containing trademarks of third parties, the “majority view” is summarized in WIPO Overview of WIPO Panel Views on Selected UDRP Questions Second Edition (“WIPO Overview 2.0”), at paragraph 2.3 as follows: “Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site's accurately and prominently disclosing the registrant's relationship with the trademark holder. The respondent must also not try to "corner the market" in domain names that reflect the trademark. Many panels subscribing to this view have also found that not only authorized but also unauthorized resellers may fall within such Oki Data principles”.

In this case, the Panel finds that the Respondents have not demonstrated that before any notice of this dispute they have used or made demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services. The disputed domain names have been, in fact, registered in order to attract Internet users to the web site of the Respondent Stuart McKay and to promote his showroom, where cars of various brands are offered for sale. Moreover, the web site to which the disputed domain names are redirected does not accurately disclose the Respondents’ relationship with the trademark holder. Furthermore, as stated in Diamond Mattress Company, Inc. v. Diamond Mattress, WIPO Case No. D2010-1637, “while the Respondent may not have set out to ‘corner the market’ in all relevant domain names, the registration of multiple domain names appropriating the Complainant’s mark is inconsistent with the fair use standards articulated in Oki Data”.

The fact that the disputed domain names are offered for sale by their holder, together with other “.uk” domains containing the trademark PORSCHE, also suggests that the disputed domain names are not being used for a legitimate noncommercial or fair use, without intent for commercial gain.

Thus, in light of the above, the Panel finds that the Respondents have no rights or legitimate interests in respect of the disputed domain names, in accordance with paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain names in bad faith:

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

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

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

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

As to the bad faith at the time of the registration, the Panel observes that in light of the amount of advertising and sales of Complainant’s products worldwide and overall the fact that the Respondent Stuart McKay operated as a reseller in the same field of activity of the Complainant and has also been selling the Complainant’s products, Mr. McKay, who is the registered owner of all the disputed domain names but for <porschecentres.com> and the beneficial holder of this latter domain name, was or ought to be well aware of the Complainant’s trademarks.

The Panel finds that (as indicated by the same Respondent Stuart McKay in his Response), the primary motive for registering and using the disputed domain names was to attract visitors to the web site of Mr. McKay in order to promote his own activity. Moreover, in the Panel’s view, he has failed to effectively or accurately disclose its relationship with the Complainant. In light of the above, the Panel concludes that the Respondent registered and has used the disputed domain names in bad faith under paragraph 4(b)(iv) of the Policy, to intentionally attract Internet users to its web site for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship or affiliation. See Diamond Mattress Company, Inc. v. Diamond Mattress (supra) and Edmunds.com, Inc. v. Ult. Search Inc., WIPO Case No. D2001-1319.

In view of the above, the Panel finds that the disputed domain names were registered and are being 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 disputed domain names <glenvarigillporsche.com>, <newboxster.com>, <newcayenne.com>, <newcayman.com>, <porschecentres.com>, <porscheengland.com>, <porscheeu.com>, <porscheeurope.com>, <porschegb.com>, <porscheinverness.com>, <porschenew.com>, <porscheshowrooms.com>, and <scotlandporsche.com> be transferred to the Complainant.

Luca Barbero
Sole Panelist
Dated: April 26, 2012

 

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