|Kläger||Dr. Ing. h.c. F. Porsche AG|
|Beklagter||Automotive Parts Solutions|
|Entscheidung||Transfer, cancellation in part|
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dr. Ing. h.c. F. Porsche AG v. Automotive Parts Solutions
Case No. D2003-0725
1. The Parties
Complainant is Dr. Ing. h.c. F. Porsche AG, Stuttgart, Germany, represented by Lichtenstein, Körner & Partners, of Germany.
Respondent is Automotive Parts Solutions, Chicago, Illinois, of United States of America.
2. The Domain Names and Registrar
The disputed domain names are the following : <911hyundai.com>, <porschepartx.com>.
The domain names are registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 15, 2003. On September 17, 2003, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain names at issue. Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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 September 25, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was October 15, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondents default.
The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on November 5, 2003. 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
Complainant is a worldwide well-known car maker utilizing "Porsche" as its trade name. The number "911" is the name of one of its model which is highly reputed.
Complainant is the owner of trademarks consisting of or incorporating the word "Porsche" in the USA, Canada, Germany, Europe which are exhibited in Annex 3 of the Complaint.
Complainant operates a web site at "www.porsche.com" which opens the gate to national web sites.
Respondent has not filed any answer allowing the panel to identify its true activity.
Nevertheless, it appears that Respondent has registered a large number of domain names including the name of famous car companies listed in Annex 11 of the Complaint. Such domain names also include a descriptive element composed of a word which relates in some way to the car business: "part", "shop", "truck", "auto". As an example, Respondent has registered <audipartx.com>; <pontiacautopartx.com>; <lexus-auto-and-parts.com>
In addition, these domain names and the contested domain names (<porschepartx.com> and <911hyundai.com>) point to standard web sites with exactly the same content and design. Names have been changed to reflect the respective domain. Phone numbers given in the contact section of the various domain names are the same. An identical disclaimer is featured at the bottom of the websites.
Within subsections of the web site various car parts are mentioned to be sold.
Through investigations conducted by Complainant, a single individual appears to be running the web sites under the domain names concerned as well as under the domain names mentioned at Annex 11 of the Complaint.
Complainant sent two cease-and-desist letters to Respondent by mail but did not receive any response, due to incorrect contact information in the whois records. An E-mail version of the cease-and-desist letter was not answered either.
5. Parties Contentions
Complainant claims that the disputed domain names are confusingly similar to Complainants trade name and trademark "PORSCHE" and "911" respectively, stressing the fact that the gTLD ".com" does not prevent confusion (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, February 18, 2000).
Complainant emphasizes that these trade names and trademarks are well known all over the world and integrated in their entirety into Respondents domain names.
According to Complainant, a descriptive component like "partx", standing for "parts exchange" even adds to the confusion because the user is led to believe that the trademark owner or some entity associated with it, operates a sales platform for original new or certified used car parts.
With regard to <911hyundai.com> Complainant explains that similarity is not prevented by adding to "911" the name "Hyundai", which is the trade name and trademark of a well-known Korean car manufacturer. Complainant adds that the combination of these elements suggests a cooperation of both car manufacturers and is thus confusingly similar to both trademarks and trade names (Allianz AG and Dresdner Bank AG v. MIC, WIPO Case No. D2001-1298, February 19, 2002).
Complainant explains that a domain name composed of trademarks owned by different parties is still confusingly similar with all the trademarks involved because the public is led to believe in a merger or cooperation between the trademark owners, in particular if they are active in the same line of business, like two car manufacturers.
As far as legitimate use is concerned, Complainant explains that:
(i) Respondent has no right or legitimate interest in respect of the domain names. Complainant points out that there is no use nor are there any plans to use the domain names with a bona fide offering of goods or services (paragraph 4 (c) (i) of the UDRP). Complainant indicates that Respondent is not just offering original car parts but all kinds of used parts from all kinds of sources, including parts manufactured by unknown manufacturers and remanufactured used parts which might pose a great risk to people relying on the good name of "Porsche". This is not a legitimate use according to Complainant, in particular as Respondent tries hard to remain anonymous, thus avoiding being held responsible for the parts sold online, and completely fails to disassociate itself from Complainant. Since the trade name and trademark involved is well known and has been used for a long period of time, Respondent would have to bring evidence for his legitimate interest (Dr. Ing. h.c. F. Porsche AG v. MACROS-TELECOM corp, WIPO Case No. D2001-0993, October 16, 2001). The Respondent is not and has never been an authorized dealer of Complainants products and there is not and never has been a business relationship between the parties.
(ii) Respondent is not commonly known by the domain-name.
(iii) Respondent is also not making noncommercial use of the domain.
According to Complainant, Respondent has registered and uses the disputed domain-name in bad faith for the following reasons:
(i) Respondent could not have been unaware of Complainants trade name and trademark and its reputation when he made the registration as he is involved in the business of selling car parts.
(ii) Respondent registered the domain name <porschepartx.com> in order to prevent the Complainant from reflecting its mark in a corresponding domain name, and Respondent engaged in a pattern of such conduct, having registered dozens of domain names composed of a famous trademark and a generic word indicating the sale of cars or car parts.
(iii) Respondent intentionally misleads and traps users who seek genuine information about the Complainant and its products. As mentioned above, there is nothing in the domain names or the web site indicating that the Respondent is not the Complainant.
This is also a case of general bad faith because Respondent intentionally and systematically uses false contact information in the whois records to evade litigation.
Respondent did not reply to Complainants contentions.
6. Discussion and Findings
The Panels findings under each heading with reference to the parties contentions, the Policy, Rules, Supplemental Rules and applicable substantive law are the following:
A. Identical or Confusingly Similar
Complainant has proven that he is the owner of the trademarks "PORSCHE" and "911".
Such trademarks are included in the two contested domain names, <porschepartx.com> and <911hyundai.com> respectively.
Regarding <porschepartx.com>, the fact that the term "partx" is added to Complainants trademark does not eliminate the identity or, at least the similarity between Complainants trademark and the contested domain name as "partx" is a descriptive component of the domain name. In numerous cases, it has been stated that a domain name that wholly incorporates a Complainants registered mark may be sufficient to establish confusing similarity for purposes of the UDRP.
<911hyundai.com>s identity or similarity is also obvious, even though Complainants trademark is associated with a third partys trade name and/or trademark which is not a party in the present procedure. The Panel agrees with the position stated by the Panel in Chevron Corporation v. Young Wook Kim, WIPO Case No. D2001-1142, December 13, 2001) regarding the domain name <chevron-texaco.com>. In the present case, the whole of the domain name is confusingly similar to Complainants trademark.
As a consequence, the action brought by Complainant meets the requirement of Article 4 (a)(i) of the UDRP.
B. Rights or Legitimate Interests
Article 4(a)(c) of the URDP explains how a Respondent may demonstrate its rights to and legitimate interests in a domain name in responding to a complaint.
In the present matter, Respondent has not filed any response.
In addition, it appears that Respondent is neither affiliated to Complainant nor an official dealer. There is no and there has never been any legal or business relationship between the parties.
As a consequence, such as in the "Telstra" decision (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, February 18, 2000) it can be stated that: " Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Uniform Policy, or of any other circumstances giving rise to a right to or legitimate interest in the domain name. In light of (i) the fact that the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to apply for or use any domain name incorporating any of those marks, and (ii) the fact that the word <TELSTRA> appears to be an invented word, and as such is not one traders would legitimately choose unless seeking to create an impression of an association with the Complainant, the Administrative Panel finds that the Respondent has no rights or legitimate interests in the domain name."
Although Complainants trademarks are not invented words but respectively the name of a person ("Porsche") and a number ("911"), the facts brought to the Panels attention in WIPO Case No. D2000-0003 are similar to the one of the present dispute.
The Panel finds that in the present case there is no proof that Respondent has a right or legitimate interest in the contested domain names.
C. Registered and Used in Bad Faith
Respondent is apparently well informed about the car business in view of the websites operated under the contested domain names.
Thus, there is no doubt that when registering the contested domain names Respondent knew that it was using protected trademarks and/or trade names.
Respondent has not proven that it had any right whatsoever to do so.
In addition, the registration, in the same domain name ("911hyundai"), of the trademarks of two competitors is a clear act of bad faith. Respondent intentionally seeks to suggest that there is some sort of cooperation between Porsche and Hyundai.
As a consequence, the Panel finds that the registration of the contested domain names have been made in bad faith.
As far as bad faith use is concerned, the Panel notes that Respondent is obviously engaged in a pattern of conduct consisting or registering trade names and/or trademarks of famous car companies and operating them under a unique web site. In fact, Respondent appears to have changed few decorative elements of this web site for each domain name in order to match the reproduced trademark.
Moreover, it is not proven that Respondent is or has been an authorized dealer of Complainants products and/or that there is or has been a business relationship between the parties.
The Panel also wishes to emphasize that Respondent intentionally and systematically uses false contact information in the whois records which makes it quite impossible to contact.
The Panel finally notes that a car parts reseller who is impossible to contact and does not respond to a Complaint filed by the company which produces the cars for which Respondent sells its products clearly acts in bad faith.
Therefore, the Panel finds that the contested domain names were registered and are used in bad faith.
D. Remedy Requested
The remedy requested by Complainant regarding <porschepatrx.com> does not raise any objection from the Panel.
Regarding the domain name <911hyundai.com> the Panel notes that the present action is brought in absence of any letter of support of any kind from Hyundai and that Hyundai is not a party in the present matter.
The Panel wishes to emphasize that in Framatome, Siemens Aktiengesellschaft and Framatome ANP v. Manu&Gi, WIPO Case No. D2001-1424 (January 31, 2002), the transfer of the domain name <framatome-siemens.com> was justified due to Framatome and Siemens co-action. In (LAir Liquide v. MIC) WIPO Case No. D2001-1246, December 12, 2001, L'Air Liquide has a letter of support from Suez Lyonnaise Des Eaux in order to request the transfer of the domain name <suezairliquide.com>.
The Panel considers that the transfer of <911hyundai.com> would violate a third partys right Hyundai in the absence of a letter of support from it or a co-action, although the Panel is aware that in some cases such a transfer was ordered but due to specific circumstances, i.e. a probable merger between the holder of the two trademarks included in the contested domain name (Chevron Corporation v. Young Wook Kim, WIPO Case No.D2001-1142, <chevron-texaco.com>).
However, the situation in this dispute differs as Complainant requests the cancellation of the domain name <911hyundai.com> and not the transfer.
The Panel therefore finds that cancellation in the present case is the appropriate remedy.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that:
- the domain name <porschepartx.com> be transferred to Complainant.
- the domain name <911hyundai.com> be cancelled.
Dated: November 17, 2003