WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dr. Ing. h.c. F. Porsche AG v. "Porsche AG"
Case No. D2002-0103
1. The Parties
The complainant in this administrative proceeding is Dr. Ing. h.c. F. Porsche AG, ("Complainant"), a private company limited by shares, incorporated under the laws of Germany, with its main business address at Porscheplatz 1, 70435 Stuttgart, Germany.
Complainant's authorized representative is Dr. Rolf Diekmann, Attorney-at-law, Lichtenstein, Körner and Partners, Heidehofstrasse 9, 70184 Stuttgart, Germany.
According to registrar's Whois database, the respondent is "Porsche AG" ("Respondent"). The address of the Respondent as contained in the domain name registration is 2112 Rush way, Cologne, Ebel, Germany.
2. The Domain Name and Registrar
The Domain Name at issue is <porscheexchange.com> ("Domain Name").
The Domain Name is registered with Tucows.com Inc. ("Registrar") of 96 Mowat Avenue, Toronto, Ontario, M6K 3M1, Canada.
3. Procedural History
A complaint ("Complaint"), pursuant to the Uniform Domain Name Dispute Resolution Policy, implemented by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999 ("Policy"), and under the Rules for Uniform Domain Name Dispute Resolution Policy, implemented by ICANN on the same date ("Rules"), was submitted to the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center") on January 31, 2002, by e-mail and was received on February 4, 2002, in hardcopy.
The Acknowledgement of Receipt of Complaint was submitted to the Complainant and Respondent by the WIPO Center on February 4, 2002.
On February 5, 2002, a Request for Registrar Verification was transmitted to the Registrar, which confirmed with its Verification Response of the same day, that the disputed Domain Name was registered with Tucows.com Inc., and that Respondent, "Porsche AG", was the current registrant of the disputed Domain Name.
The assigned WIPO Center Case Manager completed a Formal Requirements Compliance Checklist on February 6, 2002.
Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, a Notification of Complaint and Commencement of Administrative Proceeding including a copy of the Complaint (without attachments) was transmitted by the Center to the Respondent by means of email on February 6, 2002. A hardcopy of the same with attachments was also forwarded by courier on the same day.
As the address mentioned in the Whois data base is obviously incorrect (the street name "Rush way" is not German and there is no such street in the city of Cologne) and all attempts to find out the actual postal address, telephone or telefax number of Respondent have failed (see below Paragraph 4), the Panelist finds that the WIPO Center has discharged its responsibility under Paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondent".
Having received no response from the Respondent within the specified time in the Notification of Complaint, the WIPO Center issued to the Respondent a Notification of Respondent Default, on February 28, 2002.
Since Complainant requested a single-member panel and Respondent failed to submit a response, the WIPO Center invited Dr. Andrea Jaeger-Lenz, to serve on the Administrative Panel in this case on March 5, 2002. Having received a Statement of Acceptance and Declaration of Impartiality and Independence, to serve as sole panelist in Case No. D2002-0103, on the same day, the WIPO Center issued to both parties a Notification of Appointment of Administrative Panel and Projected Decision and set a decision date, with the Panelistís deadline for issuing a decision of March 19, 2002.
4. Factual Background
The following facts and statements appear from the Complaint and its annexed documents which have not been contested by Respondent:
Complainant, Dr. Ing. h.c. F. Porsche AG, is an internationally very well-known manufacturer of high performance sports cars. It is undisputed that Complainant is the registered owner of numerous trademarks consisting of or incorporating the word "Porsche".
Copies of the following trademark registrations have been submitted with the Complaint:
- German trademark registration No. 643 195 [Annex 3];
- German trademark registration No. 1001976 (Shield) [Annex 4],
- International trademark registration No. 179 928 [Annex 5 and 6];
- International trademark registration No. 473 561 [Annex 7];
- Various US Federal trademarks including registration No. 71-668978 [Annex 8];
- European Community trademark registration No. 000073098 [Annex 9];
- Various Canadian trademarks including registration No. TMA117101 [Annex 10].
The disputed Domain Name <porscheexchange.com> was registered on April 3, 2001.
The website is presented under the page title "PORSCHE EXCHANGE: THE TRADE EXCHANGE FOR PORSCHE". When entering the home page of <porscheexchange.com> the user is shown the trademark protected Porsche shield, the title "Porsche Exchange", a picture of a Porsche car, an advertisement for Porsche 911 GT 2 and the words: "Copyright © 1999 -2002, Porsche Exchange. * All Rights Reserved. PORSCHE is a Registered Trademark® of: DR. ING. H. C. F. PORSCHE K.G., GERMANY." The word "PORSCHE" of "DR. ING. H. C. F. PORSCHE K.G." is linked to the Complainantís home page (<porsche.de>, respectively, <porsche.com>).
There are four subdirectories which are connected to the home page by links: The page "contact" contains the e-mail address (info@Porscheexchange.com), the page "about" states that the website is a "trade exchange where visitors can buy and sell Porsche automobiles parts and accessories". On the page "news" there is a notice dated October 27, 2001, stating that "Porsche Exchange rebuilds" and claiming that "with free classified posting service Porsche Exchange hopes to become the largest Porsche trade site in the world". There is also a list of hyperlinks referring to different Porsche models. These hyperlinks lead to websites where third parties offer Porsche cars.
Neither the website nor the Whois record contains any information about the identity of Respondent. According to the Whois record Respondent resides in Germany, the Registrar is from Canada and the IP host address used for the domain name (220.127.116.11) belongs to a network provider in New York. The address of Respondent given in the Whois record is "2112 Rush way, Cologne, Ebel DE", but this address is obviously incorrect (see above Paragraph 3).
Complainant has tried to find out the true identity of Respondent: In the source code of the home page the e-mail-address <firstname.lastname@example.org> can be found. 23labs.com from Salt Lake City, Utah is a self-proclaimed "Developer of trade and Auction web sites" (<www.23labs.com>). Neither the home page itself nor the Whois record for <www.23labs.com> contain any information about the company (according to the Whois record address is "undetermined" and "m, k" is the contact person).
In both the Whois record of <porscheexchange.com> and the Whois record of <23labs.com> the "Sponsoring Reseller" Intercosmos Media Group, inc. dba directNic.com is mentioned. On January 22, 2002, Complainant sent a cease and desist letter via e-mail to the "Sponsoring reseller". In the answer the filing of a UDRP complaint was recommended. On January 28, 2002, Complainant sent another e-mail to the Respondent. It returned as undeliverable.
5. Partiesí Contentions
In accordance with Paragraph 4(b)(i) of the Policy, Complainant requests the Administrative Panel to issue a decision that the contested domain name be transferred to Complainant.
Complainant contends that:
(i) the domain name <porscheexchange.com> is similar to Complainantís trade name and trademark "Porsche"
Complainant points out that the trade name of Porsche, which is well known throughout the world, is embodied entirely in the contested domain name where it forms the distinctive part. Complainant also asserts that the extension indicating the top-level-domain ".com" is irrelevant and that the component "exchange" only describes that Porsche cars are sold or traded on the website. There is nothing in the disputed domain name that would signal to the public that Respondent is distinguished from Complainant.
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name
Complainant confirms that there has never been a business relationship between the parties and that Respondent is no official dealer. The website is used by third parties to sell and buy Porsche cars, including used ones. Complainant points out the lack of a disclaimer or other information within the website by which the Respondent clearly and conspicuously disassociates himself from the trademark owner. Rather, Respondent is misleading the public by creating a website with the look and feel of an original website of Porsche.
(iii) the Domain Name was registered and is being used in bad faith
Complainant asserts that Respondent could not have been unaware of Complainantís trade name and trademark and its reputation when the domain name was registered. Rather, Respondent expressly states on the website that trademark rights exist for the Complainant. Complainant contends that Respondent registered the domain name to promote his or a third personís sales or trading business and that Respondentís plan is to attract users who seek information from the Complainant. Furthermore, Respondent attempts to evade identification by giving incomplete or false information in the Whois record.
The Respondent did not file a response. Thus, Complainant's allegations are deemed to be uncontested.
6. Discussion and Findings
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
"(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith."
Identical or Confusingly Similar Domain Name: Policy 4(a)(i)
Complainant is the holder of the registered trademark "Porsche", which obviously is identical with the first and relevant part of the disputed Domain Name <porscheexchange.com>. In comparison with Complainant's trademark, the disputed Domain Name bears the additional word "exchange". The term "exchange" can be associated with a kind of platform, where goods are traded by third parties (like a stock exchange). But "porscheexchange.com" can also be understood as the domain name of an official Porsche dealer. Given the worldwide reputation of Complainant, the trademark component "Porsche" clearly dominates the disputed domain name. Although it is possible that some members of the public, in viewing the disputed domain name, will conclude that the website is used by third parties to sell and buy used cars, there is nevertheless a likelihood that the public will draw the conclusion that Complainant is the enterprise that is undertaking to provide the subject products. The domain name causes confusion about the source of the products or sponsorship of the activities. To avoid this confusion terms like "Second Hand" or "Used" should have been used (see Dr. Ing. h.c. F. Porsche AG v. Gary Charles Brown, a k a Gary Brown, a k a Charlie Brown, a k a Gary Charlie Brown, WIPO Case No. D2001-0919, Paragraph 6). In WIPO Case No. D2001-0331, Paragraph 6 (GA Modefine S.A. v Namezero.Com), it was also ascertained that a domain name which includes a world-wide known trade mark (Armani) and the word "exchange" is confusingly similar to the trademark used by the Complainant.
The addition of the gTLD ".com" does not dispel Internet user confusion because domain name registrants must make use of a gTLD, and ".com" does not in this case signal that Respondent is distinct from Complainant (see Dr. Ing. h.c. F. Porsche AG v. Gary Charles Brown, a k a Gary Brown, a k a Charlie Brown, a k a Gary Charlie Brown, WIPO Case No. D2001-0919, Paragraph 6; Dr. Ing. h.c. F. Porsche AG v. SETEC Sembinelli & Partner, WIPO Case No. D2001-0550, Paragraph 5).
Accordingly, the Panelist holds that the Complainant has established element (i) of the Policy's Paragraph 4(a).
Respondent's Rights or Legitimate Interests in the Domain Name: Policy 4(a)(ii)
It should be recalled here that, according to Paragraph 4(c) of the Policy, a Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
"(i) before any notice to you [Respondent] 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 [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trade mark or service mark rights; or
(iii) you [Respondent] 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 trade mark or service mark at issue."
The contentions made by the Complainant do not indicate that the Respondent has any rights or interest in respect of the Domain Name according to Paragraph 4(c)(i)Ė(iii) of the Policy, or any other rights or legitimate interests. It is sufficient for the Complainant to establish prima facie evidence that the Respondent lacks any legitimate interest (see Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624, Paragraph 6.11; Lycos Europe N.V. v. RegionCo, WIPO Case No. D2000-1102, Paragraph 6 b; Eckes-Granini GmbH & Co. KG v. Weitner A.G., WIPO Case No. D2000-1116, Paragraph 6). The fact that the Respondent has provided false contact details in the register prima facie demonstrates that the Respondent is aware of the absence of any rights or legitimate interests in the Domain Name.
Therefore, it is the onus of the Respondent to prove that the registration of the Domain Name was legitimate. Respondent has not provided any evidence of legitimate rights or interests in the above sense, and has not shown any other circumstances reflecting rights or legitimate interests in the disputed Domain Name.
Furthermore, there are no indications that Respondent has legitimate rights or interests. Neither is he making a legitimate noncommercial or fair use of the Domain Name as it is used for trading activities nor has he been authorized to sell Porsche cars.
In other WIPO decisions it was seen as a legitimate interest of the Respondent that it was impossible for Respondent to avoid the use of the Complainantís trade mark without loosing the opportunity to inform public about the content of his website (see DaimlerChrysler A.G. v. Donald Drummonds, WIPO Case No. D2001-0160, Paragraph 6; Koninklijke Philips Electronics N.V. v. Cun Siang Wang, WIPO Case No. D2000-1778, Paragraph 6). As said above Respondent had the opportunity to add words like "Second hand" or "Used" to avoid confusion about the source of the products.
In the absence of any indications as to a legitimate interest of Respondent to use the Domain Name, the Panelist finds that Complainant has fulfilled its burden of proof under Paragraph 4(a)(ii) of the Policy.
Domain Name Registered and Used in Bad Faith: Policy 4(a)(iii)
The third element to be established by Complainant is that the Domain Name has been registered and used in bad faith.
Paragraph 4(b) states the following four circumstances which, if found to be present, are deemed to provide evidence of bad faith in registering and using the Domain Name:
"(i) circumstances indicating that you [Respondent] have registered or you [Respondent] have 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 trade mark or service mark, or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Domain Name.; or
(ii) you [Respondent] have registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding Domain Name, provided that you have engaged in a pattern of such conduct; or
(iii) you [Respondent] have registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or your location."
This list of factors constituting bad faith under the Policy is illustrative, not exhaustive. Other evidence bearing on bad faith is also to be considered (see Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddyís Antiques, WIPO Case No. D2000-0004, Dr. Ing. h.c. F. Porsche AG v. Gary Charles Brown, a k a Gary Brown, a k a Charlie Brown, a k a Gary Charlie Brown, WIPO Case No. D2001-0919, Paragraph 6).
In the present case bad faith has been proven. The particular circumstances of this case which lead to this conclusion are:
Firstly, Respondent has utilized images from the Complainantís advertising materials on the site, and the Respondent has also used the trademark protected Porsche shield on the site. It would therefore appear that the Respondent has intentionally attempted to attract Internet users to his web site by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of the Respondentís home page. This is evidenced by the fact that the Respondent has clearly at all times been aware of the Complainantís reputation and goodwill as the Complainantís reputation is widely known (see Dr. Ing. h.c. F. Porsche AG v. Macros-Telecom corp., WIPO Case No. D2001-0993, Paragraph. 6; Dr. Ing. h.c. F. Porsche AG v. Stonybrook Investments Limited, WIPO Case No. D2001-1095, Paragraph. 6) and Respondent expressly states on the website that trademark rights exist for Complainant. Furthermore, Respondentís home page contains a link to the official home page of the Complainant. It would appear that Respondent wants to pretend connections to Complainant.
Secondly, Respondent has taken active steps to conceal its true identity by operating under the name of the Complainant ("Porsche AG"). Beyond that, Respondent has actively provided, and failed to correct, false contact details, in breach of its registration agreement (see Telstra Corporation Limited. v. Nuclear Marshmallows, WIPO Case No. D2000-0003, Paragraph 7.12; Bayerische Motoren Werke AG (BMW) v. MC Company, WIPO Case No. D2000-1694, Paragraph 6 c; Dr. Ing. h.c. F. Porsche AG v. Michel Galarneau, WIPO Case No. D2001-1448, Paragraph 6). After widespread investigations carried out by Complainant it is still completely unclear, who is behind the so-called "Porsche AG", Cologne.
Thirdly, Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name.
In an overall assessment of the contentions and the facts mentioned above, the Panelist concludes that the requirements of Paragraph 4(a)(iii) of the Policy have been sufficiently made out by the Complainant.
In view of the circumstances and facts discussed above, the Panelist decides that the disputed Domain Name is confusingly similar to the registered trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Respondent's Domain Name has been registered and is being used in bad faith.
Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panelist requires that the disputed Domain Name, <porscheexchange.com>, shall be transferred to the Complainant.
Dr. Andrea Jaeger-Lenz
Dated: March 13, 2002