|Complainant||Dr. Ing. h.c. F. Porsche AG|
|Panelist||Wefers Bettink, Wolter|
|Date of Decision||05.06.2002|
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dr. Ing. h.c. F. Porsche AG v. Simon Harvey
Case No. D2002-0194
1. The Parties
Complainant is Dr. Ing. H.C.F. Porsche AG, a private individual residing at Porscheplatz 1, 70435 Stuttgart, Germany and represented by Dr Rolf Diekmann, ("Complainant").
Respondent is Simon Harvey, a private individual residing at The Hollies, Cuthbert Road, GU12 5 ES Ash Vale, Surry, United Kingdom, ("Respondent").
2. The Domain Names and Registrar
The domain names at issue are <porschecup.com>, <porsche-news.com>, <911-carrera.com>, <911pages.com>, and <911-racing.com>.
The Registrar is Computer Service Langenbach GmbH, having its offices at Rathausufer 16, 40213 Düsseldorf, Germany, ("the Registrar").
3. Procedural History
The Complaint was submitted electronically with the World Intellectual Property Organization Arbitration and Mediation Center ("the Center") on February 27, 2002. The hardcopy under cover of a letter of the same date was received on March 1, 2002, ("the Complaint"). An Acknowledgement of Receipt was sent by the Center to Complainant dated March 5, 2002.
On March 6, 2002, a Request for Register Verification was transmitted to the Registrar. On March 8, 2002, the Registrar confirmed by e-mail that the domain names <porschecup.com>, <porsche-news.com>, <911-carrera.com>, <911pages.com>, <911-racing.com> were registered with the Registrar and that Respondent is the current registrant of those domain names.
On March 14, 2002, a Notification of Complaint and Commencement of Administrative Proceedings ( "Commencement Notification") was transmitted by email and by courier to Respondent, setting a deadline of April 3, 2002, by which Respondent could make a response to the Complaint.
On April 5, 2002, a Notification of Respondent Default was sent by email and by courier to Respondent.
On April 24, 2002, the Center sent a Notification of Appointment of Administrative Panel and Projected Decision Date by email to the parties, in which Mr. H.W. Wefers Bettink was appointed as the Sole Panelist.
4. Factual Background
Complainant is the owner of the trademarks PORSCHE, 911 and CARRERA, registered in many countries for various goods and services (see e.g. International registration no. 179928 of October 8, 1954, German Trademark no. 643195 of August 26, 1953, UK Trademark no. 729217 of April 14, 1954, US Federal Trademark no. 71-668978 of October 1, 1956, and the European Community trademark registration nos. 73098, 21089 and 283879), filed on April 1, 1996, and registered in 1999, 2000 and 2001.
For more than 10 years Complainant has organized and sponsored an International car racing series known as the "Porsche-Cup", which has taken place at various international racing tracks, including Silverstone in the United Kingdom.
The domain names at issue were registered on respectively September 12, 2002, September 25, 2002, and November 5, 2000, by Respondent.
On January 31, 2001 the American subsidiary of Complainant, after noticing that the domain name <porsche-news.com> had been registered by Respondent, sent a Cease and Desist Letter to Respondent. On February 8, 2001, Respondent replied to this letter.
When Complainant discovered that Respondent had registered the five domain names at issue, Complainant sent a Cease and Desist Letter to Respondent on December 10, 2001. Respondent did not reply to this letter.
5. Applicable Rules
Paragraph 4 (a) of the Uniform Domain Name Dispute Resolution Policy ("the Policy") directs that Complainant must prove each of the following:
(i) the domain name in issue is identical or confusingly similar to Complainant's trademark, and
(ii) the Respondent has no rights or legitimate interest in respect of the domain name, and
(iii) the domain name has been registered and is being used in bad faith.
Paragraph 4 (b) of the Policy sets out, by way of example, four circumstances, each of which, if proven, shall be evidence of the registration and use of the domain name in bad faith for the purpose of Paragraph 4 (a) (iii) above.
Paragraph 4 (c) of the Policy sets out, by way of example, three circumstances, each of which, if proven by Respondent, shall demonstrate Respondents rights or legitimate interest to the domain name for the purpose of Paragraph 4 (a) (ii) above.
6. Parties contentions
For over 50 years Complainant has manufactured sports cars. Since the 1950s the most famous in the series of sports cars manufactured is the 911, the brand "Carrera" marking a particular popular variety. "Porsche" is the prominent and distinctive part of its trade name.
Complainant owns numerous trademarks consisting of, or incorporating the elements "Porsche", "911" and "Carrera". These trademarks are known worldwide and enjoy a reputation for high quality and performance.
For more than 10 years Complainant has been organizing and sponsoring an international car racing series known as "Porsche-Cup".
Complainant states that Respondent is a provider of internet services under the trade name "SMH". Complainant has not authorized or licensed Respondent to use Complainants trademarks. There is no, and has never been, any business relationship between Complainant and Respondent.
Respondent has registered a multitude of domain names in the co.uk name space, which incorporate Complainants trademarks in the five domain names at issue. Respondent has offered these domain names for sale together with numerous other domain names he had registered. The domain names he offered for sale were offered for minimum bids ranging from GBP 450 to GBP 2995. On his website Respondent states:
"So make reasonable, market-priced bids to get the name you want before somebody else does! Your bid is important to us. Please place bids only if you are serious about purchasing the domain name(s)."
After Respondent received Complainants second Cease and Desist Letter on December 10, 2001, he removed the webpage on which he offered the domain names for sale from his server, in an attempt to cover up his efforts to sell the domain names.
At the website related to the domain names in question, Respondent provides seemingly official information about the Porsche-Cup racing series, racetracks and drivers. This content is only a pretext for advertising deals At each of the websites there is a disclaimer in a miniscule typeface stating: "This site is entirely independent of Dr. Ing. h.c. F. Porsche AG, Porsche Cars GB Ltd, its dealers, and any club or association."
Complainant states that the domain names at issue are confusingly similar to Complainants trademarks PORSCHE, 911 and CARRERA. The additional elements in some of the domain names at issue only strengthen the likelihood of confusion as they are either trademarks themselves (CARRERA) or related to Complainants "Porsche-Cup" racing series.
Complainant further submits that Respondent has no rights or legitimate interests in respect of the domain names in question. Respondent has not and has never been an authorized dealer of Complainants products and there has not and has never been a business relationship between the parties. Respondents use of the domain names for purported information is a mere scam to mask the commercial exploitation of Complainants trademarks to attract users to the site. The addition of a disclaimer does not provide legitimacy because Respondents sale of advertisements constitutes commercial use.
Furthermore, Complainant submits that Respondent has registered and uses the domain names at issue in bad faith. Immediately after the domain names were registered they were offered for sale to anyone, including Complainant, for a valuable consideration in excess of the documented out-of-pocket costs directly related to each of the domain names.
Registering a multitude of domain names is further evidence of Respondents desire to divert as many potential internet users to his site. Moreover, Respondent is competing with Complainant for the attention of internet users, which he hopes to divert to his site. He is engaged in a pattern of such conduct.
By using the domain names at issue, Respondent intentionally attempts to attract, for commercial gain, internet users to his website.
Respondent offers advertising, opportunities for advertising deals and internet related services and attracts users by causing confusion as to Complainants sponsorship of his firm and his website.
The disclaimer on the website and its design only confirm Respondents bad faith. He is aware of the confusion the domain names at issue create and carefully avoids any credible attempt to set himself apart from Complainant. His disclaimer is a mere scam, designed to be ignored or misunderstood by visitors to the website.
As Respondent has not submitted a Response to the Center, Complainants contentions are uncontested.
7. Due process
Where, as in this case, a Respondent does not submit a Response and the file does not contain any communication from Respondent, the rules of due process require the Panel to verify as much as possible that Respondent is aware of the present proceedings. The Panel is satisfied, on the basis of the file documents, that this is the case.
A hard copy of Complainant was sent by the Center to the address of Respondent mentioned under 1 above by courier and by email (returned as not deliverable) and to the technical and administrative contact by email.
The Panel therefore assumes that Respondent has received these documents, but has chosen not to respond.
8. Discussion and Findings
Complainant must provide evidence of all elements of Paragraph 4 (a) of the Policy. Since the decision to transfer or cancel a domain name may have serious consequences for the domain name holder, the evidence should be sufficient in all respects to support such a decision. The absence of a Response from Respondent, as in this case, does not discharge the Panel from its duty to establish that the evidence is sufficient.
a. Trademark rights
Complainant has provided sufficient evidence of its rights to the trademarks PORSCHE, 911 and CARRERA and that these are well-known.
b. Identical or confusingly similar
<porschecup.com> and <porsche-news.com>
The domain names <porschecup.com> and <porsche-news.com> are clearly confusingly similar to Complainants trademark PORSCHE. The domain names incorporate the trademark PORSCHE with the generic words "cup" and "news" and the suffix ".com" (which indicates that the domain name is registered in the .com gTLD). It is clear that the well-known and distinctive trademark PORSCHE is the most prominent element in these combinations, and that this may cause the public to think that these domain names are somehow connected to the PORSCHE trademark. The ability of the words "cup" and "news" to distinguish the domain names from Complainants trademark is limited. The Panel finds that Respondent does not create a new or different mark in adding the nouns "cup" and "news" and that this addition does not alter the likelihood of confusion with Complainants trademark. The Panel makes particular note of WIPO Case No. D2001-0550 Dr. Ing. h.c. F. Porsche AG v Setec <porsche-cup.com>, in which the Panel found that the domain name <porsche-cup.com> was confusingly similar to the PORSCHE trademark of Complainant. The Panel stated that "The extension indicating the top level domain .com is irrelevant as well as the hyphen and the word cup." (See also WIPO Case No. D2000-1554 Daimler Chrysler AG v James Cruz <driveamercedes.com>; WIPO Case No. D2000-0660 Yahoo! Inc. v Casino Yahoo, Inc. <casinoyahoo.com>; WIPO Case No. D2000-0464 Toshiba Corporation v Distribution Purchasing and Logistics Corporation <toshibastore.com> and NAF Case No. FA0095464 <statefarmnews.com>.)
The domain name <911-carrera.com> is clearly confusingly similar to Complainants trademarks 911 and CARRERA. The domain name incorporates both Complainants 911 and CARRERA trademarks with the suffix .com (which indicates that the domain name is registered in the .com gTLD) and the hyphen. The combination of two distinctive and well-known trademarks separated by a hyphen does not create a new or different mark, nor does this combination alter the likelihood of confusion with Complainants trademarks.
<911pages.com> and <911-racing.com>
The domain names <911pages.com> and <911-racing.com> are clearly confusingly similar to Complainants trademark 911. The domain names incorporate Complainants trademark 911 with the generic words "pages" and "racing" and the suffix .com (which indicates that the domain names are registered in the .com gTLD). It is clear that in this combination the well-known and distinctive trademark 911 stands out so that the public is led to believe that the domain name is somehow connected to the 911 trademark. The ability of the words "pages" and "racing" to distinguish the domain names from Complainants trademark 911 are limited. (See e.g. WIPO Case No. D2000-1554 Daimler Chrysler AG v James Cruz <driveamercedes.com>; WIPO Case No. D2000-0660 Yahoo! Inc. v Casino Yahoo, Inc. <casinoyahoo.com>; WIPO Case No. D2000-0464 Toshiba Corporation v Distribution Purchasing and Logistics Corporation <toshibastore.com>; WIPO Case No. D2001-0652 Miller Brewing Co. v Virtual Agents <millerlightracing.com>; WIPO Case No. D2000-1807 Bell South Intellectual Property Corporation v Free World <bellsouthpages.com> and NAF Case No. FA0095464 <statefarmnews.com>.)
c. Rights or legitimate interests
Under Paragraph 4 (c) of the Policy, Respondent may demonstrate that it has a right or legitimate interest to a domain name for the purpose of Paragraph 4 (a) (ii) of the Policy, inter alia, by providing evidence of any of the following circumstances:
"(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non commercial 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."
From the website prints submitted by Complainant and from the Panels own observations of the websites operated under the domain names at issue, it is clear that Respondent uses the domain names for websites providing information about the Porsche 911 model and about the Porsche-Cup racing events. Respondent offers advertising opportunities at these websites. The 911 pages website contains advertisements (all of which are more than 12 months old) for second hand Porsches and Porsche spare parts. Complainant has not given consent, license or authorization to Respondent for such or any other use or registration of the domain names in question. Furthermore, Respondent creates confusion by suggesting an affiliation with or authorization from Complainant both through the domain names themselves, and by prominently displaying original pictures of a Porsche GT3 picture, a stylized drawing of a Porsche 911 and by presenting official looking information on the Porsche-Cup.
The addition of a disclaimer on Respondents website under <porschepages.com> does not alter this: "The fact that the users, once so diverted or attracted, are confronted with numerous disclaimers does not cure the initial and illegitimate diversion." (See also WIPO Case No. D2000-0869, Estee Lauder Inc. v Estelauder.com <estelauder.com> and <estelauder.net>.)
The content of these websites also demonstrate that Respondent was, or in any case should have been, aware of Complainants trademarks when registering the disputed domain names. Furthermore, Respondent has offered the domain names at issue for sale and is apparently trying to sell advertising space on the relevant website. In view of this it is clear that Respondent has not made legitimate, non-commercial or fair use of the domain names at issue.
In light of the foregoing, the Panel finds that Respondent has no right or legitimate interest in the domain names at issue.
d. Bad faith
Paragraph 4 (b) (i) of the Policy states that circumstances indicating that the Respondent has registered a domain name primarily for the purpose of selling or renting it to a Complainant for monetary consideration in excess of Respondents out-of-pocket expenses directly related to the domain names shall be evidence of registration and use of a domain name in bad faith.
The Panel finds that these circumstances are present here. Respondent has offered the domain names at issue for sale at a domain name auction site. Even though no specific prices were asked for the domain names at issue, the minimum bid prices for other domain names offered for sale at this website were between GBP 450 and GBP 2995. The following was stated on this website:
"Most domains sell for 30% to 300% over the minimum bids. So make reasonable, market-priced bids to get the name you want before somebody else does!"
The asking price of other domain names offered for sale at this website and the text quoted from the website provide evidence that Respondent has registered the domain names at issue primarily for the purpose of selling them for valuable consideration in excess of the out-of-pocket expenses directly related to the registration.
The fact that Respondent, in addition to the five domain names at issue, has also registered 10 domain names which include trademarks of Complainant in the .co.uk domain, provides further evidence of Respondents bad faith. It also underlines that Respondent has registered the domain names at issue in order to prevent Complainant from reflecting his trademarks in corresponding domain names. Respondent thereby appears to have engaged in a pattern of such conduct, which is a separate ground for bad faith.
The Panel therefore concludes that there is sufficient evidence that Respondents registration and use of the domain names at issue have been made in bad faith.
On the basis of the foregoing, the Panel decides that Complainant has provided the required evidence to request the transfer of the domain names <porschecup.com>, <porsche-news.com>, <911-carrera.com>, <911pages.com>, and <911-racing.com> from Respondent to Complainant. Accordingly, pursuant to Paragraph 4 (i) of the Policy, the Panel orders the registration of the domain names <porschecup.com>, <porsche-news.com>, <911-carrera.com>, <911pages.com>, <911-racing.com> be transferred to Complainant.
Wolter Wefers Bettink
Dated: May 13, 2002