WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dr. Ing. h.c. F. Porsche AG v. HIRSCHBERG AUTOSERVICE / GORAN HIRSCHBERG
Case No. DCC2014-0001
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 HIRSCHBERG AUTOSERVICE /GORAN HIRSCHBERG of Falkoping, Sweden.
2. The Domain Name and Registrar
The disputed domain name <porsche.cc> is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 10, 2014. On January 10, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 10, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On January 15, 2014, the Center transmitted the Request to Amend the Complaint to the Complainant by email. On January 17, 2014, the Complainant filed the amendment to the Complaint to the Center by email.
The Center verified that the Complaint together with the amendment to 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 January 20, 2014.
On January 29, 2014, the Center received a suspension request from the Complainant by email. The Center notified the parties of the suspension of the proceeding on the same day. The proceeding was reinstituted on March 3, 2014.
In accordance with the Rules, paragraph 5(a), the due date for Response was March 14, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 17, 2014.
The Center appointed Knud Wallberg as the sole panelist in this matter on March 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.
4. Factual Background
The Complainant is a company domiciled in Germany. The Complainant is well known throughout the world for the manufacturing of sport cars under the trademark PORSCHE.
The Complainant has provided evidence of a number of trademark registrations with legal effect in the country of residence of the Respondent, Sweden, all consisting of or incorporating the name “Porsche”. Further, the Complainant is running a general website on the Internet at the domain name <porsche.com> as well as a number of country specific websites such as “www.porsche.se” offering information on the Complainant, the Complainant’s products, authorized distributors and related information.
The Respondent registered the disputed domain name <porsche.cc> on September 3, 1998.
In August, 2011, the Complainant contacted the Respondent and demanded inter alia the transfer of the dispute domain name. According to the Complainant, the Respondent agreed to this, but despite reminders from the Complainant, the transfer was never enacted.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical to the Complainant’s trademark PORSCHE save for the (“.cc”) country code Top-Level Domain (ccTLD) -designation.
Further, the Complainant claims that Respondent has no rights or legitimate interests in respect of the disputed domain name and that it has registered and is using the disputed domain dames in bad faith. The Respondent is thus not an authorized dealer of the Complainant, but has nevertheless used the disputed domain name for a website “www.porsche.cc” on which it has been offering used Porsche cars and cars of other brands than Porsche as well as counterfeited accessories (door mats) bearing the PORSCHE crest mark. The disputed domain name is now used to redirect Internet users to the Respondent’s website “www.hirschbergs.se” on which it offers used Porsche cars for sale, as well as accessories and spare parts for Porsche cars.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules the panel shall decide a complaint in accordance with the Policy, the 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:
(1) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(3) that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences there from as it considers appropriate.
1. Identical or confusingly similar
The disputed domain name <porsche.cc> consists of the Complainant’s trade mark PORSCHE and the ccTLD “.cc”. For the purposes of this proceeding, the disputed domain name is identical to the Complainant’s mark.
Accordingly, the Panel finds that Policy paragraph 4(a)(i) has been satisfied.
2. Rights or legitimate interests
According to the Complaint, the Complainant has not licensed or otherwise permitted the Respondent to use its trademark or to apply for any domain name incorporating the mark. Under the circumstances present in this case, the burden of proof of providing evidence of any such permission shifts to the Respondent.
The Panel recognizes that there may be some limited situations where the registration and use of a domain name that specifically refers to and incorporates the trademark of another entity may serve legitimate purposes. As it is stated in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.3:
“Consensus view: 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. Pay-per-click (PPC) websites would not normally fall within such principles where such websites seek to take unfair advantage of the value of the trademark.
However: Some panels take the position (while subscribing to the consensus view) that it will generally be very difficult for a respondent to establish rights or legitimate interests where that respondent has no relevant trademark rights and without the authority of the complainant has used a domain name identical to the complainant’s trademark (i.e., <trademark.tld>).
Furthermore: A small number of panels have taken the view that, without express authority of the relevant trademark holder, a right to resell or distribute that trademark holder’s products does not create a rightto use a domain name that is identical, confusingly similar, or otherwise wholly incorporates the relevant trademark”.
This Panel takes the view that without express authority of the Complainant, a right to resell or distribute the Complaint’s products does not create a right to use a domain name that is identical or confusingly similar to the relevant trademark. In this case, the Respondent is not an authorized dealer or reseller of the Complainant’s (used) products. In any event, even if the Panel were inclined to follow the consensus view, including in cases of unauthorized resellers, the Respondent did not meet the requirements under the Oki Data principles as, on the one hand, the Respondent has been offering cars of other brands than Porsche as well as allegedly counterfeited accessories (door mats) bearing the PORSCHE crest mark, on the website “www.porsche.cc”, and on the other hand, the disputed domain name is now used to redirect Internet users to the Respondent’s website “www.hirschbergs.se” on which it offers used Porsche cars for sale, as well as accessories and spare parts for Porsche cars without disclosing its relationship with the Complainant. See General Electric Company, GE Osmonics Inc. v. Optima di Federico Papi, WIPO Case No. D2007-0645, Cisco Technology, Inc. v. Matthhew Archer, International Computer Purchasing Ltd, WIPO Case No. D2012-0563and Oakley, Inc. v. Joel Wong/BlueHost.com-INC. WIPO Case D2010-0100.
In the circumstances present here, the Respondent’s registration and use of the disputed domain name indicates its lack of rights or legitimate interests therein, and consequently the prerequisites in the Policy, paragraph 4(a)(ii) are also considered fulfilled.
3. Registered and used in bad faith
Paragraph 4(a)(iii) of the Policy further provides the requirement to prove registration and use in bad faith. Paragraph 4(b) regulates, by way of example, the kind of evidence that may satisfy the same.
The Complainant’s trademark PORSCHE must be considered to be a well-known trademark in Sweden, and it is clear from the content of the corresponding website and of the communication between the parties prior to the filing of this Complaint that the Respondent was well aware of the Complainant and of the Complainant’s mark when it registered the disputed domain name.
As explained above the disputed domain has been used for a website at “www.porsche.cc” on which the Respondent offered used Porsche cars, cars of other brands than Porsche as well as counterfeited accessories (door mats) bearing the PORSCHE crest mark. The disputed domain name is now used to redirect Internet users to the Respondent’s website “www.hirschbergs.se” on which it offers used Porsche cars for sale, as well as allegedly counterfeit accessories and spare parts for Porsche cars without disclosing its relationship with the Complainant. It is thus evident that the use of the name Porsche refers to the specific products originally manufactured and sold by the Complainant and that this use is capable of giving the Internet user the impression that the Respondent and its website is somehow endorsed by or affiliated with the Complainant. See paragraph 4(b)(iv) of the Policy.
Bearing these facts and the facts mentioned above the Panel finds that the disputed domain name has been registered and is being used in bad faith, cf. paragraph 4(a)(iii) and 4(b) of the Policy.
Consequently, all the prerequisites for cancellation or transfer of the disputed domain name according to paragraph 4(a) of the Policy are fulfilled.
The Complainant has requested the Panel that the disputed domain name be transferred to it.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <porsche.cc> be transferred to the Complainant.
Date: April 4, 2014