WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dr. lng. h.c. F. Porsche AG v. Gaurav Khanna, Carnity
Case No. D2014-1618
1. The Parties
1.1 The Complainant is Dr. lng. h.c. F. Porsche AG of Stuttgart, Germany, represented by Lichtenstein, Körner & Partners, Germany.
1.2 The Respondent is Gaurav Khanna, Carnity of Dubai, United Arab Emirates, self-represented.
2. The Domain Name and Registrar
2.1 The disputed domain name <porschedxb.com> ("Domain Name") is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 17, 2014. On September 19, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same day, the Registrar transmitted by email to the Center its verification response confirming the Respondent as the registrant and providing contact details.
3.2 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 doing so the Center noted that the Complaint appeared to be a refiled complaint but that the Complainant has pleaded grounds which might justify entertaining the Complaint. It therefore accepted the Complaint on a preliminary basis but notified the Complainant that this was "expressly subject to any determination that the independent Panel may make on the issue of refiling".
3.3 In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceeding commenced on September 26, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 16, 2014. The Response was filed with the Center on October 14, 2014.
3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on October 24, 2014. 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.
3.5 On October 29, 2014 the Panel issued a procedural order pursuant to paragraph 14 of the Rules directing the parties to supply the Panel with copies of the parties' submissions in their previous case, Dr. Ing. h.c. F. Porsche AG v. Carnity, ",", Mr. Gaurav Khanna, WIPO Case No. D2012-1030 (the "Previous Proceeding"). These were supplied by the Complainant the same day and by the Respondent the following day.
4. Factual Background
4.1 The Complainant is a very well known manufacturer of sports cars. It has used the "Porsche" name for over seventy years and has a network of official dealers around the world. The official importer of Porsche cars in Dubai operates two service centres, one of which is located a few hundred yards from the terminals of Dubai International Airport.
4.2 The Complainant is the owner of various trade marks around the world that incorporate the "Porsche" name. They include:
(i) United Arab Emirates registered trade mark no. 2333 dated September 25, 1995 in class 12 for the term PORSCHE in stylised form;
(ii) United States registration no. 618933 dated January 10, 1956 in class 12 for the term PORSCHE in stylised form;
(iii) International (Madrid) registration no. 179928 designating numerous countries and dated October 8, 1954 in classes 7, 8 and 12 for the term PORSCHE in stylised form; and
(iv) International (Madrid) registration no. 562572 designating numerous countries and dated October 27, 1990 in classes 12 and 42 for the term PORSCHE in stylised form.
4.3 The Domain Name was initially registered on October 10, 2010. In the same month the following domain names were also registered by the Respondent:
4.4 As at May 2012, the publically available WhoIs details for all of these domain names (including the Domain Name) recorded "," as the registrant, but "Car Community Carnity" was recorded as both the administrative and technical contact.
4.5 Further, by that time all of these domain names were being used for individual websites that all shared, inter alia, the following features:
(i) an identically placed title taking the form of the car make referred to in the domain names, followed by the word Dubai (e.g., "Audi Dubai");
(ii) an identically placed strapline declaring the website to be the "Online Community for [Name of Car Brand] owners in Dubai";
(iii) an identically placed disclaimer at the top of the page below the strapline with the text "We are an independent car enthusiast, and not supported/affiliated with [Name of Car Brand]. And all [Name of Car Brand] logo's and its cares pictures is sole property of [Name of Car Brand] and used here just for reference";
(iv) an identically placed strip of photos of that make of car;
(v) an identically placed set of social media links and a drop down menu inviting the user to "select other brand"
(vi) a similar if not identically formatted set of posts on the left hand side of the web page;
(vii) an identically placed and strip of square shaped "panel" advertisements down the right hand side of the page.
(viii) an identically placed disclaimer at the bottom of the page in small print stating that "[Name of Car Brand] Dubai is in no way affiliated with [Name of Car Brand]" (e.g., "Audi Dubai is in no way affiliated with Audi Dubai"); and
(ix) below the disclaimer in similar small print, the name "Carnity".
4.6 So far as the advertisements were concerned, what was displayed in each of the "panels" varied from website to website, but in general these took the following from: (i) advertisements for specific products or services, (ii) sponsored links or (iii) general exhortations to advertise in that panel space as follows:
4.7 Although "Carnity" was mentioned on each page, there was no explanation on any of the websites as who or what "Carnity" was.
4.8 From February to September 2011 "Carnity Online Car Community" also registered a large number of domain names incorporating the names of various well known car brands which were also combined with either the term "Dubai" or the letters "dxb". Examples of those that incorporated the term "dxb", include <gmcdxb.com>, <audidxb.com>, <fiatdxb.com> and <hyundaidxb.com>. As at May 2012, many of those domain names were not being used in connection with active websites, but some of these domain names were being used to redirected Internet users to one of the websites described above and others to a website operating from the domain name <carnity.com>.
4.9 Carnity also registered the following domain names:
4.10 On May 15, 2012 the Complainant commenced the Previous Proceeding under the Policy in relation to the Domain Name and the domain name <porscheindubai.com>, naming both "," and "Carnity" as the formal respondents. A response was filed in the Previous Proceeding in which "Guarav Khanna" identified himself as both "," and "Carnity". In that response Mr. Khanna denied that "Carnity" was a commercial operation and claimed this has instead been set up by a number of friends to provide a "car community in Dubai". He admitted that the webpages were being used to display advertisements but he contended that the revenues were small and in the case of "Porsche Dubai", evidence was filled which suggested that those revenues were no more than EUR 1.4. He claimed that these revenues did not cover the "hundreds of USD" that has been spent promoting the websites and the costs of their operation.
4.11 The panel's decision in that case is dated June 29, 2012. In that decision the panel rejected the complaint. In reaching its conclusions the panel accepted that the relevant domain names were being used for a discussion forum for Porsche car owners and enthusiasts. Citing paragraph 3.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (the "WIPO Overview 2.0"), the panel concluded that the Complainant had not shown that the registrant of the domain names was "[t]rying to 'impersonate' the Complainant for commercial gain" and had, therefore, failed to show that the registrant had no rights or legitimate interests in the Domain Name. In the panel's opinion, the revenue achieved from these advertisements "represent[ed] a permissible level of incidental commercial activity".
4.12 The panel also concluded in its decision that the domain names (including the Domain Name) had not been registered or used in bad faith, relying in this respect upon the decision in Dr. Ing. h.c. F. Porsche AG v. The Eight Black Group, Simon Chen and Denise Marble, WIPO Case No. D2009-0989.
4.13 At some point subsequent to that decision the way in which the Respondent's domain names, including the Domain Name, were used, changed. In particular, the various individual forums previously operating from each of the domain names were all moved to a single website operating from the domain name <carnity.com>. The domain names were then used to redirect Internet users to that consolidated website. In the case of the Domain Name, Internet users are redirected to the "Porsche Community" webpage on the "Carnity" website. On that webpage in addition to forum links, there are two large banner advertisements. Although some of the advertisements displayed relate to Porsche related products there are also advertisements in respect of different car brands. The "disclaimers" that had previously appeared on the website operating from the Domain Name were no longer displayed.
4.14 The new consolidated "Carnity" website also included:
(i) a classified advertisements section; and
(ii) a business listings section.
4.15 The Respondent has also independently promoted the ability to advertise on the "Carnity" website. In particular, the Respondent placed the following text on the "www.uget.com" website:
"I will advertise your business on 20 car forums in UAE for $100. Advertise your business on 20 car forums in UAE, check out the 20 best car brands on www.carnity.com."
4.16 Some of the previous domain names used by the Respondent appear to have been abandoned, including the <porscheindubai.com> domain name, which together with the Domain Name, had been the subject of the Previous Proceeding.
5. Parties' Contentions
5.1 The Complainant openly admits that the present proceeding involves a refiling of a previously decided complaint (albeit only in relation to one of the two domain names the subject of the Previous Proceeding) and it at some length sets out the submissions that it put before the panel in that earlier complaint. Nevertheless, it contends that the recent changes in the use of the Domain Name "confirms what had been obvious all along, that [the] [R]espondent's only concern is commercial profit from advertising and showcasing a business model to attract investors to his enterprise".
5.2 Further, it refers to paragraph 4.4 of the "WIPO Overview 2.0" and contends that these changes constitute a "fundamental and widespread change that warrants a new complaint and calls for a different outcome of the proceedings".
5.3 So far as the requirements of the Policy are concerned, the Complainant contends that the Domain Name is confusingly similar to the Complainant's PORSCHE trade mark in that it embodies the term "Porsche" in its entirety and that the addition of the letters "dxb", which would be understood as the lnternational Air Transport Association ("IATA") code for Dubai lnternational Airport, reinforces the connection with the Complainant's business given that there is an official Porsche service centre close to that airport.
5.4 So far as rights or legitimate interests are concerned, the Complainant contends that the use of the Domain Name is different in character to the use being made of the Domain Name at the time of the previous complaint and does not provide the Respondent with a relevant right or legitimate interest in the Domain Name. Further, the Respondent's use of the Domain Name is said to involve activity that falls within the scope of paragraph 4(b)(iv) of the Policy and that the Respondent's registration of numerous domain names that incorporate various car brands falls within the scope of paragraph 4(b)(ii) of the Policy.
5.5 The Respondent makes no submissions in relation to the Complainant's refiling of the Complaint.
5.6 The Respondent claims that the Domain Name was registered having taken advice that it was possible to register and use the Domain Name if the Complainant had not registered the trade mark PORSCHEDXB in Dubai.
5.7 The Respondent also contends that the Domain Name was bought (by him and a number of friends) for the sole purpose of use in connection with a fan site for owners of Porsche cars in Dubai. The Respondent also submits evidence that he is the owner of a Porsche Cayenne Turbo.
5.8 The Respondent contends that the membership of this community fan site is free and he complains that the Complainant charges for membership of its own online club. The Respondent accepts that the current Carnity website "houses 20 best car brands on line community" and contends that the only brand owner that has complained about this is the Complainant. The Respondent claims that the Complainant wants to take ownership of the Domain Name in order to take advantage of the success of the Respondent's own online community under that Domain Name to use in respect of the Complainant's own commercial site.
5.9 The Respondent claims that the decision was made to "merge 20 different car communities into a single domain" as a result of demand from members of that community, many if not all of whom owned multiple cars. The Respondent goes so far as to claim that "every member who interacted with us made a strong mention of offering a unified platform for all car brands", but the Panel notes that no evidence is offered in respect of that claim.
5.10 The Respondent claims that the new website still incorporates a disclaimer, but what the Respondent claims to be a disclaimer is simply the following text:
"Porsche car owners community for GCC specs
Formerly known as http://porschedxb.com".
5.11 So far as the business listing and classified sections of the current site are concerned, the Respondent clams as follows:
"as a matter of goodwill gesture, we have listed Porsche Dealer contact detail as a first business in our business listing section, which is still under development stage. Once completed we plan to open this business directory for our members to list their dealers or non-dealers workshop, garages, spare part shops etc. to help each other based on their reviews. That will not be a paid feature as complainant mentioned. We also adding free classifieds for complementing the real community usability".
5.12 So far as revenue from advertisements is concerned, the Respondent supplies evidence which prima facie suggests that its Google Ad revenues in the past 6 months amounts to EUR 73.64. So far as the Respondent's "www.uget.com" advertisement is concerned, the Respondent claims that the intention was to use any revenues generated to offset the costs of the operation of the current website but that there was no response to this advertisement and that the Respondent is "struggling to break even the cost by 1/10 of [its] monthly expenses".
5.13 The Respondent asks that, as was the case with the Complainant's first complaint, the Panel reject the current Complaint, but also requests that if the Panel is minded to rule against the Respondent, then any transfer of the Domain Name to the Complainant should be subject to the following conditions:
"Give us 1-year time to transfer its credit from all search engines.
WIPO guarantees that Complainant will not redirect this domain name to porscheclubuae.com and try to take advantage of our efforts spent.
WIPO guarantees that Complainant will not redirect this site to any Porsche website and take advantage of our efforts spent.
WIPO guarantees that Complainant will not use this domain name to build another Porsche community in Dubai or in UAE and take advantage of our efforts spent."
6. Discussion and Findings
6.1 It is incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy. The Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
6.2 The Panel will address each of these requirements of the Policy in turn, but before doing so it is necessary briefly to address the fact that this is a case where a complaint has been refiled.
A. Should this "refiled" Complaint be allowed?
"A refiled case concerns the complainant submitting a second complaint involving the same domain name(s) and the same respondent(s) as in an earlier complaint that had been denied. A refiled case may only be accepted in limited circumstances. These circumstances include when the complainant establishes in the complaint that relevant new actions have occurred since the original decision, or that a breach of natural justice or of due process has occurred, or that there was other serious misconduct in the original case (such as perjured evidence). A refiled complaint would usually also be accepted if it includes newly presented evidence that was reasonably unavailable to the complainant during the original case.
A re-filing complainant must clearly indicate the grounds allegedly justifying the refiling of the complaint. The provider with which such refiled complaint has been filed has responsibility for determining if, prima facie, the refiling complainant has indeed pleaded grounds which might justify entertaining the refiled complaint. An affirmative determination is a precondition for provider acceptance of the refiled complaint, and for panel determination of the refiling request and any decision on the merits. A re-filing complainant's failure to clearly identify that its complaint is a re-filing of an earlier UDRP complaint may constitute a material omission for the purpose of any panel assessment of reverse domain name hijacking. [See further paragraph 4.17]".
6.4 A number of cases are cited in the WIPO Overview 2.0 in respect of this consensus view. The first of these is Creo Products Inc. v. Website In Development, WIPO Case No. D2000-1490. In that decision the panel acknowledged that there was nothing express in the Policy or the Rules that dealt with the admissibility or otherwise of refilled complaints. Nevertheless, that panel quoted the reasoning of the panel in the earlier decision of Grove Broadcasting Co. Ltd. v. Telesystems Communications Limited, WIPO Case No. D2000-0703. In the Grove Broadcasting Co. Ltd case the panel had relied upon paragraph 15(a) of the Rules, which directs a panel to decide a case in accordance with "any rules and principles of law that it deems applicable". Then (notwithstanding acknowledging that it was "not appropriate to refer to a particular legal system") the panel sought to draw heavily on common law principles as to the circumstances in which a case could either be re-litigated or appealed. From this the panel in the Grove Broadcasting Co. Ltd case concluded that the circumstances in which a case could be reconsidered under the Policy should be limited and suggested in this respect (a) serious misconduct on the part of one of the participants in the original proceeding; (b) perjured evidence in the original proceeding; (c) the discovery of credible and material evidence which could not have been reasonably foreseen or known about in the original proceeding; or (d) a breach of natural justice.
6.5 The panel in the Creo Products Inc. case then sought to make a distinction between those sorts of (i) refiled complaints that concern the same acts which formed the basis of the original complaint, and (ii) refiled complaints that concern acts which have occurred subsequent to the decision on the original complaint. He accepted that in the first type of case the ability to re-file should be limited to the sorts of circumstances identified in Grove Broadcasting Co. Ltd case. If such limitations were not imposed, a complainant would be allowed to "have another bite of the cherry" perhaps in the hope that in the second case the panel would have a view on the operation of the Policy that was more favourable to the complainant (something which he believed may have happened in Parker Hannifin Corporation v. East Bay Website Company, eResolution Case No. AF-0587 and which he considered to be "inappropriate").
6.6 However (starting at paragraph 6.14 of that decision) the panel then stated as follows:
"In relation to the second type of Refiled Complaint, namely those that concern acts which have occurred subsequent to the decision on the original complaint, it seems to this Administrative Panel that a different approach is warranted. With a Refiled Complaint of this type, the concept of res judicata does not arise. Because the subsequent complaint concerns acts which occurred after the original decision, it is not an action upon which an adjudication has already taken place; the subsequent complaint is truly a new action under the Uniform Policy. It follows that, subject to one exception, the merits of a Refiled Complaint of this type should be determined in the same manner as any new complaint under the Uniform Policy. The exception is that the acts on which the Refiled Complaint is based should not be, in substance, the same as the acts on which the previous complaint was based (even if those previous acts would likely be included as part of the facts and arguments asserted in the new complaint). That is to say, the acts on which the Refiled Complaint is based need to be such as to mean that the Refiled Complaint is truly a new action under the Uniform Policy, not just an application for readjudication of the previous complaint. (When properly applied, this exception would preclude an unsuccessful complainant from lodging, in the hope that the subsequent panel will come to a different conclusion on the facts, a Refiled Complaint based on subsequent acts that are either a repetition of or substantially the same as the acts on which the previous complaint was based.)
In relation to a Refiled Complaint that is truly a new action under the Uniform Policy, the administrative panel is undertaking a consideration of the merits of the case de novo. It follows that, unless agreed otherwise by the parties, the administrative panel considering the Refiled Complaint cannot rely on the findings of fact, or on the conclusions on the application of the Uniform Policy to the found facts, reached by the administrative panel on the previous complaint. To succeed, the Refiled Complaint must independently establish to the satisfaction of the subsequent administrative panel each of the three requirements of paragraph 4(a) of the Uniform Policy. Given the nature of this type of Refiled Complaint, it may be difficult for the complainant to satisfy the three requirements of paragraph 4(a) of the Uniform Policy. But if such a Refiled Complaint does satisfy those three requirements, then the complainant should not be refused a remedy merely because the respondent and the domain name in issue are the same as in some previous complaint that was brought by the complainant in relation to different acts by the respondent. This Administrative Panel believes that this approach to the issue of a Refiled Complaint of the second type reflects the general principles of the law in relation to re-litigation of cases".
6.7 Although these cases appear to set out a sensible set of guidelines as to when a refiled case can be accepted, they need to considered and applied with care. There is clearly a logical distinction between cases which rely upon a new set of facts and those which do not. However, it needs to be remembered that under the Policy although the issue of "rights in a trade mark", "rights or legitimate interests" and "bad faith use" can all be determined in a refiled proceeding on the basis of acts or circumstances that might have occurred subsequent to an earlier decision, the same is not likely true of the issue of "bad faith registration". If one is dealing with the same parties and the same domain name (and assuming that the domain name has not been transferred from and back to the respondent), then in both the first proceeding and the refiled proceeding, the panels would be faced with the identical factual question whether the respondent's initial registration was in bad faith.
6.8 Of course, acts subsequent to the original proceeding may provide fresh evidence that is highly pertinent to the assessment of whether the initial registration was in bad faith. But the question faced by both panels remains the same. In such a case, the subsequent acts relied upon by the complainant are simply a subset of the new "credible and material evidence which could not have been reasonably foreseen or known" about in the original proceeding identified in the Grove Broadcasting Co. Ltd case.
6.9 Further difficulties can arise where there is a divergence of opinions among panels as to the operation of the Policy. For example, let us suppose that a panel in a refiled complaint accepts that there is new credible evidence before it which could not have been reasonably foreseen or known about in the original proceeding, and which if it had been before the original panel would have been material to that first panel's conclusion on the first panel's view of the Policy that the complaint should be rejected. What then is the second panel to do if it concludes that the case can be decided in favour of the complainant without reliance on that evidence? It is perhaps a little unreal to expect the second panel to be confined to a reading of the Policy that it does not accept. Nevertheless, if the second panel is not so confined, in practice the complainant would be allowed a "second bite of the cherry" of the sort disavowed (and in the opinion of this panel rightly disavowed) in the Grove Broadcasting Co. Ltd case.
6.10 This is precisely the scenario that the Panel believes that it is faced with in this case. The Panel accepts that the Complainant's evidence of acts of the Respondent after the Previous Proceeding including the Respondent's redirection of Internet users to a new combined "Carnity" website and the solicitation of advertisements at a price of USD 100 per advertisement, constitutes "credible and material evidence which could not have been reasonably foreseen or known" about in the original proceeding. Although such acts show a new state of affairs in respect of which the issues of rights and legitimate interests and bad faith use might be newly assessed, in reality this material amounts to fresh evidence as to the issue that the panel in the Previous Proceeding clearly considered central to its findings in this case; namely whether the Domain Name was registered and then subsequently used with a view to commercial gain.
6.11 As the Panel will go on to explain in greater detail below, it does not consider that the Complainant needs to show that the Respondent had commercial gain in mind when it registered and used the Domain Name. But if contrary to the Panel's view this were the correct test, the Complainant has provided new, credible and material evidence so far as that test is concerned. It is evidence of a different character to that relied upon by the Complainant in the Previous Proceeding and, when considered together with that initial evidence, is sufficiently compelling that it might (and in this particular case, does) justify the Panel reaching a different conclusion.
6.12 In the circumstances the Panel is prepared to consider the refiled Complaint.
6.13 For the sake of completeness the Panel would add that it accepts (as does the Complainant) that this is a refiled Complaint notwithstanding the fact that the name of the registrant recorded in the WhoIs details for the Domain Name has changed in the meantime from "," to "Gaurav Khanna". Mr. Khanna expressly identified himself as the "," in the Previous Proceeding and there is no suggestion that there has been a change in the legal person or entity who "owns" the Domain Name since that date.
B. Identical or Confusingly Similar
6.14 The Complainant clearly owns a number of trade marks that incorporate the term "Porsche", albeit in stylised form, at least as was annexed to the Complaint. The Domain Name can only be sensibly read as the terms "Porsche" and "dxb" in combination with the ".com" Top-Level Domain ("TLD"). The addition of the term "dxb" does not so detract from the term "Porsche" in the Domain Name as to prevent a finding of confusing similarity (as that term is understood under the Policy) with the trade marks in which the Complainant has rights. In the circumstances, the Complainant had made out the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
6.15 There is no suggestion in this case that the Domain Name has been used in connection with any other than a genuine website providing an online forum for those owning or having an interest in the Complainant's cars. The Respondent contends that those operating the website are fans of the Complainant's cars.
6.16 The WIPO Overview 2.0 contains separate discussions in relation to criticism and fan sites. The discussion at paragraph 2.4 of the Overview deals with criticism sites. After a statement to the effect that the paragraph "only concerns sites that practice genuine, noncommercial criticism" it describes two views as follows:
"View 1: The right to criticize does not necessarily extend to registering and using a domain name that is identical or confusingly similar to the complainant's trademark. That is especially the case if the respondent is using the trademark alone as the domain name (i.e., <trademark.tld>) as that may be understood by Internet users as impersonating the trademark owner. Where the domain name comprises the protected trademark plus an additional, typically derogatory term (e.g., <trademarksucks.tld>), some panels have applied View 2 below."
"View 2: Irrespective of whether the domain name as such connotes criticism, the respondent has a legitimate interest in using the trademark as part of the domain name of a criticism site if such use is fair and noncommercial."
6.17 For the reasons that this Panel set out at length in 1066 Housing Association Ltd. v. Mr. D. Morgan, WIPO Case No. D2007-1461, the Panel broadly agrees with "View 1" subject to the qualification in respect of <trademarksucks.tld> set out in the final sentence of that paragraph. Paragraph 4(c)(iii) of the Policy gives as an example of a legitimate interest:
"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 Panel is of the view that use of the trade mark alone in a domain name without some differentiating addition or modifier, is likely to involve impersonation and such impersonation is neither "legitimate" or "fair". It does not matter that who is really behind a website becomes apparent when one reaches that website. By that point the impersonation has already been effective in drawing the Internet user to the site. However, where the domain name includes an addition or modifier such as "sucks", the position is likely to be different. An addition or modifier may signal to Internet users that the domain name is unlikely to be operated by the relevant trade mark owner. In such circumstances the there is no longer any impersonation through the domain name alone.
6.18 As was discussed by the panel in Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign, WIPO Case No. D2004-0206, what is a sufficient addition or modifier for these purposes needs to be assessed on a case by case bases. In that case the word "campaign" in the domain name <covancecampaign.com> was considered by the panel to be sufficient.
"View 1: The registrant of an active and noncommercial fan site may have rights and legitimate interests in the domain name that includes the complainant's trademark. The site should be actually in use, clearly distinctive from any official site, and noncommercial in nature. Panels have found that a claimed fan site which includes pay-per-click (PPC) links or automated advertising would not normally be regarded as a legitimate non-commercial site. However, some panels have recognized that a degree of incidental commercial activity may be permissible in certain circumstances (e.g., where such activity is of an ancillary or limited nature or bears some relationship to the site's subject)."
"View 2: A respondent does not have rights or legitimate interests in expressing its view, even if positive, on an individual or entity by using an identical or confusingly similar domain name, 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 and use. Also, where the domain name is identical to the trademark, panels have noted that such respondent action prevents the trademark holder from exercising its rights to the trademark and managing its presence on the Internet."
6.20 Notwithstanding the separate discussions in the WIPO Overview 2.0 of criticism sites and fan sites, in the opinion of the Panel it is difficult to see why there should be any material difference between the underlying principles involved at least so far as <trademark.tld> domain names are concerned (notwithstanding the use of the word "tarnish" in Policy, paragraph 4(c)(iii)). Individual panels may have different views as to whether the use of a domain name that takes the form of <trademark.tld> is by itself unfair and illegitimate impersonation, but whichever view is adopted there is no readily apparent distinction to be found in the Policy between those cases where the domain name is used for a criticism site and those cases where the domain name is used for a fan site.
6.21 Given this, the fact that the WIPO Overview 2.0 describes two competing views in relation to fan sites in a similar manner to that which it does in the case of criticism sites is perhaps unsurprising. Indeed, at first sight there are obvious similarities between View 2 in the fan site discussion and View 1 in the criticism site discussion (for example the suggestion that domain names that are identical to the relevant trade mark may raise specific problems). However, the language is nevertheless not the same. For example, View 2 in the fan site discussion refers to use that "intentionally misrepresents" in a general sense rather than "impersonation" (whether intentional or not). Therefore, if one reads the various "Views" in isolation there is a danger that one can read into these descriptions differences in approach between criticism sites and fan sites that in this Panel's opinion have no foundation in the Policy.
6.22 With this in mind and turning to the facts of this case, the Panel is of the view that regardless of whether the Domain Name had been registered and is being used with a view to commercial gain and regardless of whether it is apparent on reaching the website that the Respondent's forum is not operated by the Complainant, the Respondent has no rights or legitimate interests in the Domain Name. This is not a case where the Domain Name comprises (ignoring the TLD) the Complainant's trade mark alone. There is also the "dxb" addition. However, that addition does not in any way signal to the Internet user that the Domain Name is not operated by the Complainant. Indeed, the Panel accepts the Complainant's contention that if anything the use of the term "dxb" reinforces such an association given that the most natural reading of those initials is as the IATA code for Dubai International Airport and that there is an official Porsche service centre at that location.
6.23 However, this was not the approach by the panel in the Previous Proceeding. Having considered the differing "Views" set out in paragraph 2.5 the Overview 2.0, the panel appears to have concluded that on either View the Complainant had failed to show that the Respondent did not have a legitimate interest in the Domain Name. View 2 was held not to apply because according to the panel it was apparent there was no "intent" by the Respondent to misrepresent itself as the Complainant when one looked at the content of the website then in operation. The panel also placed some reliance on the disclaimers appearing on the website.
6.24 Given this, the key question was whether the Respondent was seeking when using the Domain Name for that website to take commercial advantage of the Complainant's mark. In the opinion of the panel there was not; characterising the admitted small levels of revenue from Google Ads as "only ancillary to the purpose of providing a forum for enthusiasts of PORSCHE cars".
6.25 The Complainant now contends that the more recent use of the Domain Name makes it clear that the Respondent is seeking to use the Domain Name to derive commercial advantage, and that was the Respondent's intention all along. The Panel agrees.
6.26 In the opinion of the Panel the following material before the original panel is at the very least highly suggestive of such a commercial intent:
(i) the fact that the Respondent had at the same time registered not just domain names that incorporated the PORSCHE mark but the marks of many other car manufacturers. The overall scale of the registrations suggests a commercial rather than a noncommercial operation;
(ii) the fact that the Respondent did not offer any explanation as to why the Domain Name contained a reference to Dubai Airport. This is not an obvious choice of name for a noncommercial website for Porsche fans in Dubai. In the absence of any explanation the Panel accepts the Complainant contention that the Domain Name was being used because of its associations with an official Porsche service station;
(iii) the fact that the Respondent had also registered a number of domain names such as <buycardubai.com> and <sellgoldindubai.com>, which suggests that the Respondent intended to engage in online commercial activity at least some of which related to motor vehicles; and
(iv) the fact that various advertisements were placed on these websites. Even if the Google Ads could be dismissed as nothing more than minor or "ancillary" revenue, some of these web pages contained advertising panels that exhorted Internet users to "advertise here" and describing the website as the "Most Effective Place to Advertise Your Car Business".
6.27 The more recent changes to the way in which the Domain Name is being used provide further evidence that this is the case. First, there is the inclusion of classified and business listings on the new Carnity website. Even if one accepts at face value the Respondent's claims that these listings are or will be provided for free, the fact of the matter is that they show that the website is to be used for commercial advantage, even if that is the commercial advantage of someone other than the Respondent. In this respect, it is significant that the words "noncommercial and "commercial" in paragraph 4(c)(iii) of the Policy are not limited to the commercial gain of the Respondent. Second, there is the advertising on the "www.uget.com" website. To offer to accept advertisements in return for USD 100, is a very different type of activity than the placing of Google Ads. The Respondent appears to contend that no-one took up that offer and it is still struggling to break even. Even if this is so, in the opinion of the Panel, in this case it does not matter. The question is not how financially successful the relevant activity is, but whether it is commercial in character.
6.28 In the opinion of the Panel this more recent activity is more than enough when considered together with the previous material before the panel in the Previous Proceeding, for the Panel to conclude that the use of the Domain Name is not noncommercial and that no legitimate interest exists in this case under paragraph 4(a)(iii) of the Policy.
6.29 Further, the Panel believes that the fact that the Domain Name is being used to promote a single website that covers brands of cars other than Porsche, is also of significance. In this respect it is noticeable that the consensus opinion among panels is that for a reseller or distributor of trade marked goods or services have rights or legitimate interests in a domain name, then the website operating from that domain name should only sell trade mark goods (see paragraph 2.3 of the WIPO Overview 2.0). By analogy, it is difficult to see how the use of a domain name for a fan site or criticism site can provide a right or legitimate interest if the goods and services being praised or criticised are not limited to goods bearing the trade mark used in the domain name.
6.30 In the circumstances, the Panel holds that the Respondent has no rights or legitimate interests in the Domain Name and that the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
6.31 Given the discussion of rights and legitimate interests above, in the Panel's view it necessarily follows that the Domain Name had been used in bad faith. For the reasons given by the Panel in 1066 Housing Association Ltd. v. Mr. D. Morgan, supra, the use of a domain name that involves an impersonation of a trade mark holder is likely to be bad faith use, even if the use domain name is being used for a noncommercial criticism or fan site in respect of the trade mark holders goods or services.
6.32 Further, given the Panel's findings as to the commercial activity taking place from that website, it also follows that the website falls within the scope of paragraph 4(b)(iv) of the Policy.
6.33 The issue of whether there has been bad faith registration is somewhat more difficult. Nevertheless the Panel also holds that there has been bad faith registration in this case. The Complainant does not maintain that there has been a recent change in use of the Domain Name which means that what was once legitimate has become illegitimate. It instead contends that the recent activity reveals what were the Respondent's motives all along, including at the time of registration. The Panel accepts on the balance of probabilities that this is so, not least for all the reasons identified in paragraph 6.26 of this decision above.
6.34 In the circumstances, the Panel holds that the Complainant has also made out the requirements of paragraph 4(a)(iii) of the Policy.
6.35 The Respondent contends that if the Panel finds against it in this case, any transfer of the Domain Name should be subject to certain conditions. At the heart of these contentions is the claim that the Respondent has over the past few years built up a successful Porsche owners forum from a website operating from the Domain Name, and that it would be unfair for the Complainant to be able to use the Domain Name to bolster traffic to its own competing forum.
6.36 Paragraph 4(i) of the Policy states as follows:
"The remedies available to a complainant pursuant to any proceeding before an Administrative Panel shall be limited to requiring the cancellation of your domain name or the transfer of your domain name registration to the complainant."
6.37 Although the wording of paragraph 4(i) limits the remedies "available to a complainant" to cancellation or transfer (see also for example ISL Marketing AG, and The Federation Internationale de Football Association v. J.Y. Chung, Worldcup2002.com, W Co., and Worldcup 2002, WIPO Case No. D2000-0034), it does not expressly preclude the placing of some form of delay or conditionality on that cancellation or transfer. However, as far as the Panel is aware no panel has adopted that approach in the past.
6.38 Further, even if a panel wished to do this, it is hard to see how this might be achieved in a manner which is consistent with the provisions of the Policy and the Rules. So far as delay is concerned, to try and dictate this in a final decision would be difficult to reconcile with paragraph 8(a) of the Policy. Perhaps this could be addressed by suspending the proceedings for a period of time, but the Rules and Policy only expressly provide for suspension in circumstances where there are separate court proceedings (see paragraph 18(a) of the Rules). Sometimes proceedings are also suspended to allow settlement discussions to take place (see paragraph 4.12 of the WIPO Overview 2.0), but that is usually with the consent of both parties.
6.39 So far as the imposition of conditions is concerned there is simply no mechanism available under the Policy to directly impose or enforce the same. The Respondent in this case calls for various "guarantees" from WIPO as to how the Domain Name is used, but neither the WIPO nor the Panel has any power to give them (see Telekom Austria AG v. Reginaldo Mercatello, WIPO Case No. D2002-0235). Perhaps, a panel could make a cancellation or transfer conditional on the giving by the complainant of certain voluntary undertakings (a practice that is not uncommon in certain common law jurisdictions where a court believes that such an undertaking is necessary to prevent a possible injustice where injunctive relief is sought), but the only way in which such an undertaking could then be enforced (if at all) would be through separate court proceedings (which in turn raises separate jurisdictional issues).
6.40 However, regardless of whether imposing any delay or conditions is permitted by the Rules or Policy and whether this would be practical or possible, the Panel does not think this is a case where delay or conditionality would be appropriate. The Complainant has prevailed in the present proceeding, and prima facie it is entitled to the relief sought. It is inherent in the reasoning of the Panel that the Respondent has illegitimately taken advantage of the Complainant's trade mark rights from the date of registration over 4 years ago. For the Panel to impose some form of delay would allow that illegitimate taking of advantage to continue. So far as the imposition of conditions upon the Complainant's use of the Domain Name is concerned, there is no evidence before the Panel that "Porsche DXB" was directly used as a name for the Respondent's website at any time, and it is clear that the transfer of the relevant forum to the website operating from the domain name <carnity.com>, happened at least several months ago. Perhaps there will be some residual traffic to the new website from those using the Domain Name, but the Panel is not prepared in the absence of any evidence from the Respondent in this respect to assume in the Respondent's favour that this would be so substantial that it would be unfair or inappropriate to order unconditional transfer.
7.1 For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <porschedxb.com>, be transferred to the Complainant.
Matthew S. Harris
Date: November 3, 2014