WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dr. lng. h.c. F. Porsche AG v. Handelsprijzen.nl B.V.
Case No. DNL2015-0051
1. The Parties
Complainant is Dr. lng. h.c. F. Porsche AG of Stuttgart, Germany, represented by Lichtenstein, Körner and Partners, Germany.
Respondent is Handelsprijzen.nl B.V. of Stadskanaal, the Netherlands, internally represented.
2. The Domain Name and Registrar
The disputed domain name <porsche-kopen.nl> (the "Domain Name") is registered with SIDN through PuurIdee.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 17, 2015. On September 18, 2015, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On September 21, 2015, SIDN transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Dispute Resolution Regulations for .nl Domain Names (the "Regulations").
In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 25, 2015. In accordance with the Regulations, article 7.1, the due date for Response was October 15, 2015. The Response was filed with the Center on October 14, 2015.
On October 21, 2015, SIDN commenced the mediation process. On November 26, 2015 SIDN informed parties that the dispute had not been solved in the mediation process.
The Center appointed Dinant T. L. Oosterbaan as the panelist in this matter on November 27, 2015. The Panel finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2.
4. Factual Background
Complainant has been making sports cars for more than 70 years.
According to the evidence submitted by Complainant, Complainant owns a large number of German and international trademark registrations for PORSCHE, including:
- International trademark registration PORSCHE No. 179 928, registered October 8, 1954 (protected in the Benelux Countries);
- Community trademark registration PORSCHE No. 000073098, registration date December 12, 2000.
The Domain Name, <porsche-kopen.nl>, was registered by Respondent on November 13, 2012.
5. Parties' Contentions
According to Complainant the Domain Name is confusingly similar to the PORSCHE trademarks. Complainant has been a maker of sports cars for more than 70 years, utilizing PORSCHE as the prominent and distinctive part of its trade name. It also owns numerous registered trademarks consisting of or incorporating the word PORSCHE. According to Complainant the trademark and trade name PORSCHE are known throughout the world and enjoy a reputation for high quality and excellent performance. Porsche cars are distributed worldwide through a network of official dealers. Complainant operates its website at "www.porsche.com".
According to Complainant, Respondent has no rights or legitimate interests in respect of the Domain Name.
In support Complainant submits the following factual background which is evidenced by multiple screenshots of the website to which the Domain Name resolves.
Respondent operates an online trade platform where traders of automobiles can advertise their offerings. The main platform seems to be operated at "www.handelsprijzen.nl". Although Respondent has no legal or business relationship with Complainant and in particular it is not an authorized seller, Respondent has designed the website "www.porsche-kopen.nl" so that it appears as if it were operated by an official distributor or otherwise authorized by Complainant. Originally and until 2014, the website conspicuously displayed the Porsche Crest, making it at first glance look like an official website. When it became aware of the website, Complainant's official importer in the Netherlands sent a cease and desist letter to Respondent, which was ignored. Only after a reminder Respondent slightly changed the design by replacing the Porsche Crest. Still, the idea to mislead the public as to the involvement of Complainant is clearly dominant in how the website was later redesigned. Such false impression is achieved by several means. The prominent part "Porsche" in the Domain Name serves as a dragnet and already indicates an official website. This impression is reinforced in the view of the public by the use of original photographic material throughout the website (instead of the Porsche Crest), most prominently an eye catching large image of a red colored Porsche Cayman GTS that is the centerpiece of the entry page and emblem of the whole website. This photo has been copied from Complainant's website without authorization where it has originally been published as an illustration in a press release ("An unmistakable character"). Thereby, Respondent also infringes upon Complainant's copyright.
According to Complainant, Respondent makes no effort to disassociate itself from Complainant, just the opposite. First, it is not even clearly indicated who operates the website. At the top, the side and the bottom of the entry page and throughout the website to which the Domain Name redirects, there is a prominent feature which to many users will appear as the identification of the operator of the website itself and the characterization of its content. This element identifies a trademarked name "FIRSTGEAR Speed and Luxury Cars" with a photo that shows both a Porsche car and a number of Rolls Royce cars standing in front of a "FIRSTGEAR" store, apparently for sale. The user is invited to "Kijk" (translated: "look") in order to make his dream come true and is then redirected to "www.firstgearcars.nl" which is operated by Firstgear Cars BV. At this website cars of many brands are being advertised as "investment cars", like BMW, Ferrari, Mercedes, Audi and many others (listed as "Binnenkort verwacht").
In addition, there are car logos and a list of brand names at the bottom of the page. Complainant adds that on the website to which the Domain Name resolves, just above the prominent Porsche Cayman GTS photo, there is a black bar which indicates the chapters of the website: "Home I Andere merken I Adverteren". The subchapter "Andere merken" thus appears to be an integral part of the website where offerings of cars from other manufacturers can be found. It is a link that redirects the user to Respondent's main website ("www.handelsprijzen.nl/portals") advertising cars of all kinds of brands.
From a factual point of view Complainant also mentions the following. At the very bottom of the entry page of the website to which the Domain Name resolves there is a tiny copyright note that starts with the words "Copyright 2014 Porsche-kopen.nl is een onderdeel van Handelsprijzen.nl". The use of a domain name instead of the full name "Handelsprijzen.nl B.V." makes it almost impossible for the public to know that this is a company that is not operated by "Firstgear", but by a separate company. It is particularly difficult to tell both companies apart as the full company name, the postal address, the phone number or the registration number with the "Kamer van Koophandel" of these companies are not mentioned anywhere on the website. As a result, even visitors who care to read the fine print at the bottom of the page will have to do extensive additional research to find out who actually runs the website. Right next to the copyright note there is a kind of disclaimer, but as unclear who the operator of the website is it is unclear who the disclaimant is. The disclaimer that Respondent uses is carefully designed to escape the eye. It is hidden at the very bottom of the entry page, written in tiny script and embedded among copyright notice and general explanations. Not even a whole sentence is devoted to the issue.
From a legal perspective Complainant argues as follows.
Complainant primarily invokes OKI Data Americas, Inc. v. ASD Inc., WIPO Case No. D2001-0903, governing the question whether a reseller of trademarked goods can use the trademark at issue in its domain name. The principles laid down therein are universally accepted in decisions under the both the Uniform Domain Name Dispute Resolution Policy (the "UDRP") and the Regulations.
According to Complainant, the issue of whether the operator of a sales platform and provider of financial services who is no actual reseller of the product can be treated under the Oki Data principles need not be discussed because Respondent fails the test that this decision establishes.
Complainant also submits that Respondent fails on the second criterion of the Oki Data principles which requires that Respondent must use the site to only sell the trademarked goods. In fact Respondent is not selling only the trademarked goods but advertises cars of many brands. Such brands are directly advertised on the entry page of the website through "Firstgear" and by the subchapter "Andere Merken". Complainant adds that the subchapter on the website ("Andere Merken") is not a clearly designated link and that the images of Rolls Royce cars with advertising for a website that offers all kinds of brands ("Firstgear") even appears to identify the operator of the website. In addition the elements that lead the visitor to different brands do not take up only a minor part of the website but visually dominate it, in particular the advertising/identification of "Firstgear".
According to Complainant, Respondent also fails the third criterion of the Oki Data principles, which requires that the website should accurately disclose Respondent's relationship with the trademark owner. Complainant argues that the disclaimer does not accurately disclose Respondent's relationship with the trademark owner as it does not even clarify who the disclaimant is and whether "Firstgear" accepts this disclaimer as its own. The wording "en heeft geen enkele relatie met het merk Porsche en zijn geen geautoriseerde Porsche dealer" does not exclude an endorsement by Complainant of the website or the listings therein, and it does not even refer to Complainant but a "merk" which means trademark or brand but does not clearly refer to a business corporation. The disclaimer does not disclose its relationship, rather it is hidden at the very bottom of the page, written in minuscule script and embedded in unrelated text elements. Finally, there are elements that falsely suggest that it is operated by the trademark owner, or that the website is the official site, in particular photos unlawfully copied from Complainant's website.
Complainant concludes that Respondent lacks legitimate interests in the Domain Name and that the Domain Name has been registered or is being used in bad faith.
In its response, in substantial part quoted literally below, Respondent acknowledges that the name Porsche is Complainant's property and that Respondent does not have any rights in this name. Respondent adds that it does not use the Domain Name for publishing other content than Porsche vehicles for its customers. It also adds: "We are very strict and do our very best not to look like the brand Porsche or there websites. And, or have any relationship to the brand Porsche."
According to Respondent it has the right to use the name Porsche-kopen.nl for the following reasons:
"1. The only thing we display are advertisement of Porsche vehicles.
2. We do not use Porsche logo's or other brand material.
3. Are very clear in displaying to be not a part of the Porsche Group.
4. Have this domain name since June 2009 and is part of a larger network of websites and domain names. Therefore this domain name is very important for us."
According to Respondent the Domain Name has not been registered or is being used in bad faith for the following reasons: "We use www.porsche-kopen.nl since June 2009 to generate traffic to our customers/car companies who sell Porsche vehicles. This is the way we are trying to display all the Porsches which are for sale in the Netherlands realtime. Also the vehicles who are for sale at the posche dealers, but also the Porsche vehicles who are for sale in other channels. We do not have any direct profit from this, it is al service product, but a substantial part of our businessmodel."
Respondent concludes as follows: "Handelsprijzen.nl BV understands that Porsche AG wants to control everything (online) with his brand and name. But we think we do not harm the Brand " Porsche AG" in any way. We see this the name "www.porsche-kopen.nl" as a part of a larger network and therefor it is a very important part of our advertisement network. Are there possibilities to work together with this domain name www.porsche-kopen.nl?"
6. Discussion and Findings
Based on article 2.1 of the Regulations, a claim to transfer a domain name must meet three cumulative conditions:
a. the domain name is identical or confusingly similar to a trademark or trade name protected under Dutch law in which the complainant has rights, or other name mentioned in article 2.1(a) under II of the Regulations; and
b. respondent has no rights to or legitimate interests in the domain name; and
c. the domain name has been registered or is being used in bad faith.
A. Identical or Confusingly Similar
Pursuant to article 2.1(a) of the Regulations, Complainant must establish that the Domain Name is identical or confusingly similar to a trademark in which Complainant has rights.
Complainant has established that it is the owner of large number of trademark registrations including a Community trademark registration for PORSCHE.
The Domain Name, <porsche-kopen.nl>, incorporates the entirety of the well-known PORSCHE trademark as its distinctive element. Many decisions under the Regulations have found that a domain name is confusingly similar to a complainant's trademark where the domain name incorporates the trademark in its entirety. The addition of the common, descriptive and non-distinctive elements "kopen" (translated: "buy") is insufficient to avoid a finding of confusing similarity. The Top-Level Domain ".nl" may be disregarded for purposes of article 2.1(a) of the Regulations.
The Panel finds that the Domain Name is confusingly similar to Complainant's PORSCHE trademark.
B. Rights or Legitimate Interests
Article 3.1 of the Regulations sets out examples of circumstances through which a respondent may demonstrate that it has rights to or legitimate interests in a domain name for purposes of article 2.1(b) of the Regulations. In view of the fact that that the Regulations are to an extent based on the UDRP, it is well established that cases decided under both the Regulations and the UDRP are relevant to this proceeding (see, e.g., Aktiebolaget Electrolux v. Beuk Horeca B.V., WIPO Case No. DNL2008-0050).
In this regard the Panel notes that under the UDRP, as set out in the WIPO Overview of WIPO Panel views on selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.3, 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 at issue if certain requirements are met. The leading case on this point is OKI Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. This decision has been confirmed to be of relevance for the Regulations inter alia in Seiko EPSON Corporation v. ANEM Computers / ANEM, WIPO Case No. DNL2010-0024 and Maison Louis Latour v. Jos Beeres Wijnkoperij, WIPO Case No. DNL2011-0074.
It is also precedent that the Oki Data criteria and considerations may be equally applicable to circumstances such as those in which a person is offering genuine goods of a trademark owner, or services related to those goods, but is not an authorized reseller or in an authorized relationship with the trademark owner as such.
For a respondent to be successful under the Oki Data case it must meet each of the following criteria:
a. Respondent must actually be offering the goods or services at issue;
b. Respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods;
c. the site must accurately disclose Respondent's relationship with Complainant; it may not, for example, falsely suggest that it is Complainant, or that the website is the official site, if, in fact, it is only one of many sales agents;
d. Respondent must not try to corner the market in all domain names, thus depriving Complainant of reflecting its own mark in a domain name.
Oki Data furthermore acknowledges the potential evidence relevant to the bona fide of the legitimate use by a respondent.
ad a. In the view of the Panel, Respondent fails to meet criterion a.
According to its Response, Respondent only uses the website to which the Domain Name resolves in order to display advertisements by third parties of Porsche vehicles. As stated in the WIPO Overview 2.0, paragraph 2.3, pay-per-click websites would not normally fall within the Oki Data principles as such websites seek to take unfair advantage of the value of the trademark.
In the present case the advertising-only site of Respondent with redirection to websites of various advertisers can be considered to be similar to a pay-per-click website which takes unfair advantage of the famous PORSCHE trademark, also in view of the fact that there is no relationship between Respondent and Complainant.
ad b. In the present case, it appears that Respondent advertises not only trademarked PORSCHE cars via the website to which the Domain Name resolves, the Panel notes that Complainant has submitted extensive evidence that the website of Respondent advertises cars of many brands, which brands are directly advertised on the entry page of the website through "Firstgear" and indirectly through the subchapter "Andere Merken" (translated: "Other Brands").
Respondent submits in its Response in general terms that the website only displays advertisements of Porsche vehicles. However, Respondent failed to produce any evidence supporting this submission and Respondent also did not contest the detailed factual allegations of Complainant that not only the trademarked goods are advertised for sale but also other cars. In fact, the evidence produced by Respondent (Annex 2 to the Response) is in complete contradiction to its submission. This evidence supports the allegations of Complainant as the "Firstgear" advertisement (with the text: "Passie en emoties voor exclusieve auto's bij Firstgear Cars"; translated: "Passion and emotions for exclusive cars at Firstgear cars") and the "Andere merken" subchapter/link feature prominently on the screenshot of website of Respondent as submitted by Respondent as Annex 2 to its Response.
Respondent thus fails to meet criterion b.
ad c. The website to which the Domain name resolves contains at the bottom the following text:
"Copyright 2014 Porsche-kopen.nl is een onderdeel van Handelsprijzen.nl en heeft geen enkele relatie met het merk Porsche en zijn geen geautoriseerde Porsche dealer" (translated: "Copyright 2014 Porsche-kopen.nl is part of Handelsprijzen.nl and does not have any relationship with the mark Porsche and is/are not an authorised Porsche dealer". In the similar case Bayerische Motoren Werke Aktiengesellschaft v. Linus Geerts, WIPO Case No. DNL2012-0030, <bmw-kopen.nl>, the panel decided as follows: "The mere fact that the home page of the websites under the disputed domain names mentions that "BMW kopen" and "MINI kopen", respectively, are part of "Handelsprijzen.nl" is insufficient to be regarded as the required information with respect to the (absence of the) relationship with the Complainant."
However, in the present case the above statement is followed by a more clear reference to the relationship between Complainant and Respondent. In any event, given the foregoing, the Panel need not make a finding in this regard.
Finally, Respondent contested in general terms the specific allegation of Complainant that the website contains copyrighted material taken from the website of Complainant, but Respondent failed to produce any supporting evidence that the picture of the Porsche car featuring prominently on the website was made by or for Respondent and not taken from the website of Complainant. In the view of the Panel this copyright infringement undermines any bona fide legitimate use by Respondent of the website.
In view of the foregoing, the Panel holds that Respondent has not established rights to or legitimate interests in the Domain Name. The requirement of article 2.1(b) of the Regulations is therefore met.
C. Registered or Used in Bad Faith
The Panel finds that the Domain Name has been registered and is being used in bad faith. The trademarks of Complainant were registered as early as 1954. The Panel notes Complainant's submission that Respondent's website uses the well-known trademark of Complainant in its entirety to earn from advertising and redirection of users to various other websites. In its response, Respondent acknowledged that the Domain Name included Complainant's well-known PORSCHE trademark.
The Panel adds that Respondent notes in its response that the registration and use of the website to which the Domain Name resolves is a substantial part of the business model of Respondent. In the circumstances of the case, this indicates that Respondent registered and used the Domain Name with the intention to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the trademarks of Complainant as to the source, sponsorship, affiliation, or endorsement of its website or location or of a service on its website or location. As per article 3.2(d) of the Regulations, this circumstance is evidence that the Domain Name has been registered or is used in bad faith.
Accordingly, the Panel finds that the Domain Name has been registered and is used in bad faith by Respondent.
For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the Domain Name, <porsche-kopen.nl>, be transferred to Complainant.
Dinant T. L. Oosterbaan
Date: December 11, 2015