WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dr. Ing. h.c. F. Porsche AG v. Carnity, “,”, Mr. Gaurav Khanna
Case No. D2012-1030
1. The Parties
The Complainant is Dr. Ing. h.c. F. Porsche AG of Stuttgart, Germany, represented by Lichtenstein, Körner & Partners, Germany.
The Respondent is Carnity, “,”, Mr. Gaurav Khanna of Dubai, United Arab Emirates, self represented.
2. The Domain Names and Registrar
The disputed domain names <porschedxb.com> and <porscheindubai.com> are registered with GoDaddy.com, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 15, 2012. On May 15, 2012, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain names. On the same date, GoDaddy.com, LLC 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” 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 May 22, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 11, 2012. The Response was filed with the Center on June 7, 2012.
The Center appointed Ross Wilson as the sole panelist in this matter on June 15, 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.
4. Factual Background
The Complainant has been a maker of sports cars for more than 70 years. PORSCHE cars are distributed worldwide through a network of official dealers. They enjoy a reputation for high quality and outstanding performance. The official PORSCHE importer in Dubai operates two service centers one of which is a few hundred yards from the Dubai International Airport.
The Complainant utilizes PORSCHE as the prominent and distinctive part of its trade name and owns numerous registered trademarks in almost every country in the world consisting of or incorporating the word “Porsche”. Its earliest trademarks were registered as an International Registration in 1954 and in the United States of America in 1956.
According to the Respondent, its activities in relation to the disputed domain names were established in 2010 by four friends who recognized that there was no active online car community in Dubai at that time. It wanted to build the first car community in Dubai where people in Dubai can freely discuss and share their experiences and problems. Membership to the online car community is free and now has 368 members and receives about 30,000 hits each month.
The disputed domain names <porschedxb.com> and <porscheindubai.com> were initially registered on October 10, 2010 and September 10, 2011 respectively.
5. Parties’ Contentions
The Complainant contends that the disputed domain names are confusingly similar to its trademark as both embody the word “Porsche”. The likelihood of confusion is considered especially likely because the Complainant’s official importer has its office in the city of Dubai and one of its services is located close to the Dubai International Airport.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names. It does not have a business relationship with the Respondent. It argues that the Respondent is not using the disputed domain names with a bone fide offering of goods or services, is not commonly known by the disputed domain names and is not making noncommercial use of the disputed domain names because the associated websites contain Google Ads.
The Complainant states that the Respondent has registered and used the disputed domain names in bad faith as the Respondent has no legitimate interests in the disputed domain names which so closely resemble the Complainant’s well-known trademark. In addition, the Respondent’s identity cannot be confirmed and in the Complainant’s view the design of the website would make Internet users believe it is an official website. The Complainant contends that there is a pattern of conduct manifest in dozens of domain names incorporating the trademarks of other well-known car makers. The Complainant considers the Respondent’s intention for registering the disputed domain names is to either sell it or use it to attract for commercial gain Internet users to the websites.
The Complainant has expressed a number of concerns about the Respondent and its motives. For example, the Respondent is not readily identifiable and it has registered a number of domain names incorporating well-known automakers in combination with Dubai and the IATA airport code for Dubai in order to create a network of “communities”. Also, it has registered other domain names using generic words such as “sellcarindubai”, “buycarindubai” and “sellgoldindubai”. Further according to the Complainant the Respondent or a related individual or business has registered several domain names combining prestige car names and the city of Delhi, India, and has an email address possibly linked to the “www.car.com” car selling platform.
The Complainant contends that the websites include the Porsche logo and various photographs of cars copied from the Complainant’s advertising and contain Google Ads. Also, it considers the disclaimers are present but inconspicuous.
The Complainant suggests that perhaps the Respondent has a business strategy or plan to introduce an online selling platform for cars in the United Arab Emirates (UAE) via community websites and the mass registration of domain names are intended to and likely to attract traffic from car owners or users interested in certain car brands. In the Complainant’s view the disputed domain name is a business operation rather than a fan website, particularly as there is no business relationship between the parties and no authorization has been given to use the Complainant’s trade name or trademark.
The Respondent states that its four founding members are friends who are employed in senior positions in Dubai and simply wished to set up their online car community out of a love of cars and the need for a platform where they can interact with other car owners. When first considering the car community concept the Respondent claims to have made numerous email attempts to contact the PORSCHE dealer in Dubai to seek advice, support and any affiliation. It did not receive a reply. The Respondent states that the websites are purely for personal use and operate as fan sites. Its operations are not intended to be a business model as suggested by the Complainant nor were the disputed domain names bought for the purpose of selling them.
The Respondent states that it built the car community in good faith taking care to display on its website two disclaimers and setting out the philosophy of the community (“share experiences, discuss problems and help others with your knowledge”). The Respondent wants its users to accept it as a Porsche car community in Dubai and nothing else. In the Respondent’s view, there is no Porsche logo used on its websites and the words “Porsche Dubai” are not presented in the style or font used by Porsche for its trademark or logo.
The Respondent counters some of the Complainant’s claims by now providing contact details and stating that there is “no company or entity involved behind this community to mislead the brand user to buy / sell cars, spare parts or any car related services”. The Respondent notes that membership is free just like most other fan sites.
The Respondent explained that the Delhi domain names referred to by the Complainant were purchased because two of the founding members are from Delhi, India, and consider the success and usefulness of the Dubai car community might be duplicated in Delhi in the future.
The Respondent states that it monitors the websites and removes any defaming comment or foul language directed at the PORSCHE brand and the local dealer. The Respondent claims the photographs on its website were taken from royalty free sources of wallpaper sites and are only used to show and build the enthusiasm in the fan site. The Respondent has offered to consider removing them if the Complainant has any objection to their use.
In response to the Complainant’s concerns about the lack of contact details the Respondent has provided full details claiming that it had previously acted on the advice of its web designer not to provide details in order to avoid junk mail and advertising SMS. Similarly, with respect to the reference made by the Complainant that there was possibly a link between the Respondent and the owners of <car.com> the Respondent advised that the person who registered the domain names on its behalf had simply used a “dummy email address” for the inactive domain names.
The Respondent states that the Google Ads were included on its website to cover the costs of the GoDaddy.com server costs. The Respondent provided evidence that in the three months since using the advertisements it had recovered EUR 1.40.
Finally, the Respondent identified numerous domain names using the trademark PORSCHE relating to specific and enthusiasts clubs some of which have paid membership, run Google Ads and contain the names of PORSCHE car models or business related to PORSCHE.
6. Discussion and Findings
The onus is on the complainant to prove each of the three elements set out in paragraph 4(a) of the Policy:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has provided evidence demonstrating that it has had registered rights in the trademark PORSCHE since 1954.
The disputed domain names consist of the Complainant’s trademark in its entirety together with the words “in Dubai” and the gTLD extension “.com” in one and the letters “dxb” and the gTLD extension “.com” in the other. It has been held in many previous UDRP cases that incorporating a trademark in its entirety is typically sufficient to establish that a disputed domain name is identical or confusingly similar to a registered trademark (see Oakley, Inc. v. Kate Elsberry, Elsberry Castro, WIPO Case No. D2009-1286 and World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306).
The addition of the words and letters to the Complainant’s trademark cannot be considered distinctive and do not affect the question of identical or confusing similarity.
The Panel finds that the Complainant’s trademark is readily recognisable within the disputed domain names. Therefore, the Complainant has proven that the disputed domain names are identical or confusingly similar to the trademark in which it has demonstrable rights and in doing so has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy rights to or legitimate interests in a disputed domain name can be demonstrated if a respondent:
- before receiving any notice of the dispute, was using the disputed domain name in connection with a bona fide offering of goods or services; or
- has been commonly known by the disputed domain name; or
- is making legitimate noncommercial or fair use of the domain name, without intention for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has provided evidence that the disputed domain names were in active use before there was any notice of the dispute. Also, evidence was provided in the form of membership numbers and website hits to demonstrate that the websites actually provide a service to PORSCHE owners in Dubai who wish to discuss matters related to PORSCHE cars with other owners and enthusiasts. The Respondent stated aim is to attract enthusiasts of PORSCHE cars in Dubai to form an active community and use the website to communicate to others of like interest. The websites indicate that the discussion fora are actively used.
In the Panel’s view the presentations of the websites do not infer a “look and feel” of an official PORSCHE website. In fact that the Respondent has not used the famous Porsche crest logo or tried to imitate the distinctive type font used by Porsche. This confirms in the Panel’s mind that the Respondent is not attempting to deceive Internet users. A similar view was formed by the panel in Dr. Ing. h.c. F. Porsche AG v. Del Fabbro Laurent, WIPO Case No. D2004-0481 where it was found that Internet users would not be misled because the Respondent did not use “the distinctive characters nor the logo nor the drawing of the “PORSCHE” trademark, but uses a different calligraphic presentation”.
The websites for the disputed domain names contain two disclaimers. At the top of the page “We are an Independent car enthusiast, and not supported / affiliated with Porsche. Please contact your car dealer directly for sales, support or complaints”. At the foot of the home page “Porshce [sic] Dubai is in no way affiliated with Porshce [sic]. And all Porshce [sic] logo’s [sic] and its cars pictures is sole property of Porshce [sic] and used here just for reference”. The Panel considers these disclaimers are reasonably clear and in particular the disclaimer at the top of the home pages is quite prominent taking up two lines across the webpage. According to the Respondent extra care was taken to deliberately place disclaimers at the top and bottom as an expression of “good faith”.
Consideration of the role of disclaimers on the web page of a disputed domain name is discussed in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), at paragraph 3.5. The consensus view is that disclaimers cannot by themselves cure bad faith, when bad faith has been established by other factors. However disclaimers, especially if they are sufficiently clear and prominent, may sometimes be found to support other factors indicating good faith or legitimate interest. The Panel considers the Respondent’s website disclaimers are sufficiently clear and prominent and there is little likelihood of confusion by Internet users. The inclusion of appropriate disclaimers can be sufficient to avoid Internet user confusion. For example, in the fan site case of Besiktas Jimnastik Kulubu Dernegi v. Mehmet Tolga Avcioglu, WIPO Case No. D2003-0035 it was not clear to the panel that “even if the site at the Domain Name were being operated for gain that any likelihood of confusion exists, given the Respondent’s evidence to the effect that appropriate disclaimers are contained within the site”.
The Complainant has argued that the Respondent cannot be making legitimate noncommercial or fair use of the disputed domain names because it is using Google Ads. The Respondent advised that it has used Google Ads on its websites for the purpose of offsetting the GoDaddy.com server costs. The Respondent provided evidence that the advertising generated five “clicks” over the most recent three months generating revenue of EUR 1.40. In the Panel’s view the Respondent is not seeking commercial advantage through the Google Ads and in the circumstances such revenue represents a permissible level of incidental commercial activity.
The Respondent states that the disputed domain names are being used as fan sites for enthusiasts of PORSCHE cars. In considering whether or not a fan site can generate rights or legitimate interests in the disputed domain names, the WIPO Overview 2.0 identifies two views at paragraph 2.5. One view is that a respondent has no rights or legitimate interests “if the respondent is intentionally misrepresenting itself as being (or as in some way associated with) that individual or entity, or seeks to derive commercial advantage from its registration or use”. In this case the Panel does not consider there is any evidence to suggest that the Respondent is misrepresenting the Complainant (its website is not considered deceptive and contains disclaimers) and is not seeking to derive commercial advantage (it offers free membership and its revenue from Google Ads is only ancillary to the purpose of providing a forum for enthusiasts of PORSCHE cars).
The second view is that active and noncommercial fan sites may have rights and legitimate interests in disputed domain names that include the complainant’s trademark. In these cases fan sites should actually be in use, clearly distinctive from any official site and noncommercial in nature. Based on the above discussion, the Panel considers each of these elements applying in this case. This conclusion is similar to that in Estate of Francis Newton Souza v. ZWYX.org Ltd., WIPO Case No. D2007-0221 where the panel stated that “genuine noncommercial fan sites may indeed give rise to a legitimate interest. Paragraph 4(c)(iii) of the Policy provides as an example of how to demonstrate rights or legitimate interests in a domain name that the registrant is “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”. This language makes it clear that the operator of a noncommercial fan site can take advantage of this provision unless the operator, with an intent for commercial gain, is misleadingly diverting consumers or tarnishing the mark. Here, even if consumers might be confused as to whether the site is an official site of F.N.Souza or his former curator or his estate, the fact is that there is no showing that any of this is being done with an “intent for commercial gain”, and thus the Policy mandates a finding that the noncommercial fan site operator has a legitimate interest under Section 4(c)(iii)”.
In summary, the Panel considers that the evidence of record in these Policy proceedings is not sufficient to prove that the Respondent is trying to “impersonate” the Complainant for commercial gain, but rather tends to support a conclusion that the disputed domain names are being used with a bona fide offering of goods and services, and the presentation of the Respondent’s website is not in this Panel’s assessment likely to mislead Internet users into believing it is operated or endorsed by or affiliated with the Complainant.
Accordingly, the Panel finds that the Complainant has not proven that the Respondent has no rights or legitimate interests in respect of the disputed domain names for the purposes of the Policy.
C. Registered and Used in Bad Faith
It follows from the finding above that the Complainant has not succeeded in these proceedings in showing that the disputed domain names were registered and used in bad faith. The evidence shows that the Respondent who is a car enthusiast has established online car communities for other enthusiasts. These circumstances are similar to those in Dr. Ing. h.c. F. Porsche AG v. The Eight Black Group, Simon Chen and Denise Marble, WIPO Case No. D2009-0989 where an unofficial website was created by an enthusiast. In that case the panel considered an Internet user viewing the website would be in no doubt that it was an unofficial website created by an enthusiast and consequently “it cannot be inferred that the Respondents set out to mislead Internet users”. The panel went on to remark that “Although the Complainant’s mark has a very high reputation, it does not follow that any use of it in a domain name would be in bad faith for the purposes of the Policy”.
In summary, there is no indication on the record that the Respondent intends to sell the disputed domain names. The Panel does not agree with the Complainant’s bad faith assertions that the disputed domain names were acquired to attract Internet users for commercial gain and that the disclaimers used by the Respondent are inconspicuous. Finally, the Panel considers as conjecture the Complainant’s argument that the Respondent is pursuing a business model of building a network of community websites.
On the basis of the above and the finding that the Respondent has rights or legitimate interests in the disputed domain names, the Panel is satisfied that the Respondent is not in violation of paragraph 4(a)(iii) of the Policy.
7. Reverse Domain Name Hijacking
The Respondent raised the matter of the Complainant wanting to “harass and make an attempt to Reverse Domain Name Hijacking and gain control over our Porsche Community in Dubai and redirect it to the Porsche Dealer website in Dubai”.
According to the Rules, reverse domain name hijacking means using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name. In other words, wrong and improper or reckless motives are the common factor for such complainants’ actions.
In this case the Respondent has not provided any evidence of harassment or that the Complainant was acting in bad faith or abusing the administrative proceeding.
The Panel finds that the Complainant has not acted wrongly or improperly and did not have reckless motives. The Panel therefore declines to find reverse domain name hijacking in these circumstances.
For all the foregoing reasons, the Complaint is denied.
Date: June 29, 2012