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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dr. Ing. h.c.F. Porsche AG v. Gary Charles Brown, a k a Gary Brown, a k a Charlie Brown, a k a Gary Charlie Brown
Case No. D2001-0919
1. The Parties
The Complainant is Dr. Ing. h.c.F. Porsche AG, a corporation organized in Germany, with place of business in Stuttgart, Germany.
The Respondent is Gary Charles Brown, a k a Gary Brown, a k a Charlie Brown, a k a Gary Charlie Brown,, with address in London, England, UK.
2. The Domain Name(s) and Registrar
The disputed domain names are <porscheimporter.com>, <porscheimporters.com>, <porsche-importer.com> and <porsche-importers.com>.
The registrar of the disputed domain names is Domain Bank, Inc., with business address in Bethlehem, Pennsylvania, USA.
3. Procedural History
The essential procedural history of the administrative proceeding is as follows:
(a) The Complainant initiated the proceeding by the filing of a complaint by e-mail received by the WIPO Arbitration and Mediation Center ("WIPO") on July 17, 2001, and by courier mail received by WIPO on July 20, 2001. The requisite filing fees were paid by bank transfer. On July 20, 2001, WIPO transmitted a Request for Registrar Verification to the registrar, Domain Bank, Inc. (with the Registrar’s Response received by WIPO on July 25, 2001).
(b) On July 26, 2001, WIPO transmitted notification of the complaint and commencement of the proceeding to Respondent via e-mail, telefax and courier mail.
(c) August 10, 2001, Respondent’s response was received via telefax by WIPO. It was subsequently received in hardcopy and in electronic format. Respondent transmitted his response to Complainant.
(d) On August 20, 2001, WIPO invited the undersigned to serve as panelist in this administrative proceeding, subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence ("Statement and Declaration"). On August 23, 2001, the undersigned transmitted via telefax the executed Statement and Declaration to WIPO.
(e) On August 24, 2001, Complainant and Respondent were notified by WIPO of the appointment of the undersigned sole panelist as the Administrative Panel (the "Panel") in this matter. WIPO notified the Panel that, absent exceptional circumstances, it would be required to forward its decision to WIPO by September 7, 2001. The Panel received a hard copy of the file in this matter by courier from WIPO.
(f) Following notification from the Panel of circumstances requiring an extension of the date for decision in this matter, WIPO notified the parties that the projected date for a decision in this matter would be extended until September 14, 2001.
The Panel has not received any requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties. The proceedings have been conducted in English.
4. Factual Background
Complainant is the holder of numerous trademark registrations around the world for the term "PORSCHE". In the United Kingdom, "PORSCHE" was registered on the Trade Marks Register on April 14, 1954, No. B729217, in International Class 12, covering motor cars and parts thereof (Complaint, Annex 3). In Germany, "PORSCHE" was registered on the Trade Marks Register ("Urkunde über die Entragung des Warenzeichens") on August 26, 1953, No. 643195, covering, inter alia, automobiles and parts ("Kraftwagen und deren Teile") (Id., Annex 4). Complainant has furnished copies of certificates of registration, along with evidence of renewals for these registrations, as well as evidence that it has extended the scope of trademark registration for "PORSCHE" to products and services in addition to automobiles and parts.
Complainant has registered the domain names <porsche.com> and <porsche.de> and maintains active commercial websites at Internet addresses (URL’s) incorporating these names.
It is apparent from the evidence submitted that Complainant’s "PORSCHE" mark is well known throughout the world among consumers of automobiles as identifying Complainant as the source of products.
According to the registrar’s verification response to WIPO, dated July 25, 2001, "Charlie Brown" is the listed registrant of the domain names <porscheimporter.com>, <porscheimporters.com>, <porsche-importer.com> and <porsche-importers.com>. According to printouts of Domain Bank, Inc. WHOIS database searches furnished by Complainant, the disputed domain names <porscheimporter.com> and <porsche-importer.com> were registered on June 13, 2000, and <porsche-importer.com> and <porsche-importers.com> were registered on July 30, 2000 (Complainant, Annex 1).
As of the date of the filing of the complaint in this proceeding, two of the disputed domain names resolved to a standard Internet service provider (E-traders Ltd.) web page indicating that no web site had yet been established (id., Annex 13). Two of the disputed domain names did not resolve to a website. Respondent does not dispute that no use of the disputed domain names has been made in connection with active websites.
In addition to the disputed domain names, Respondent has registered numerous other domain names that incorporate the well known marks of automobile producers, including (but not limited to), <astonmartinmotors.com>, <astonmartindealer.com>, <ferrari-dealer.com>, <jaguarimporter.com> and <vwimporters.com>. These domain names are sometimes registered under names that represent variations of "Charlie Brown", for example, "Gary Brown", but always at the same address as Respondent, and including contact information that refers to "Gary Charles Brown". (Id., at Annex 15).
As of July 10, 2001, the disputed domain names, as well as the other domain names incorporating the names of well-known automobile producers referred to above, were posted for auction sale at the E Traders Ltd. auction website (at URL <www.e-traders.ltd.uk/auction>). The disputed domain names <porscheimporter.com> and <porscheimporters.com> were each posted with a "reserve" bid price of Ј5,000 UK, and showed "current bids" of Ј2,000 UK and Ј2,500 UK, respectively. The disputed domain names <porsche-importer.com> and <porsche-importers.com> were each listed with a reserve price of Ј1,000 UK, and showed current bids of Ј500 UK and Ј0 UK, respectively. (Id., Annex 14a).
Complainant has submitted substantial evidence of investigations regarding Respondent’s claim to be an importer and dealer in automobiles, including Porsches. This evidence includes printouts of the results of various Internet searches of British telephone directories. No facts were found to indicate that Respondent is doing business as an automobile importer or dealer. There is, it should be noted, an automobile tire dealer in London operating under the name "Charlie Browns Autocentres". Respondent does not claim a connection with this business. (Id., Annexes 12-13).
By e-mail dated July 10, 2001, Complainant (through its counsel in Stuttgart, Germany) transmitted a cease and desist and transfer demand to Respondent. By e-mail of July 12, 2001, Respondent ("Gary Charlie Brown") transmitted an e-mail response to Complainant indicating that he was the registered owner of the disputed domain names. He also indicated that Complainant’s U.S. counsel’s office had previously contacted him regarding the disputed domain names, and that he would furnish a copy of his counsel’s response to that initial contact. That response, transmitted by the British firm "Mundays" (with no identification of an individual attorney on the copy furnished by Respondent), indicated that it represented Charlie Brown, and went on to state :
"Mr. Brown is a motor car importer resident in this country dealing in a number of sports styled motor cars including Porsche. The use of the above names are a valuable asset to his business and it is his overriding intention to preserve them for that use. It is fair to say, however, that they are at this stage not being used and they are in no way contaminated." (Id., Annex 18-20).
Complainant (via counsel) responded that it was not convinced by Respondent’s counsel’s letter, and would proceed with WIPO arbitration if its transfer demand, was not met.
Respondent has submitted evidence of his activities as an importer of cars consisting of (1) a photograph showing him standing alongside two Porsche automobiles which is said to have been taken in front of "my last house" (Respondent asserts there are three Porsches in the photograph, but the resolution of the picture transmitted does not permit a conclusion to be drawn as to this), along with his statement that these automobiles were imported (2) a single invoice made to him for the purchase of a Land Rover in Marbella, Spain (3) a newspaper article indicating that prices for automobiles in the United Kingdom are substantially higher than in continental Europe, and (4) a UK license issued to Respondent to carry on the businesses of "consumer credit" and "credit brokerage".
The Service Agreement in effect between Respondent and Domain Bank, Inc. subjects Respondent to Domain Bank, Inc.’s dispute settlement policy, the Uniform Domain Name Dispute Resolution Policy, as adopted by ICANN on August 26, 1999, and with implementing documents approved by ICANN on October 24, 1999. The Uniform Domain Name Dispute Resolution Policy (the "Policy") requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which WIPO is one, regarding allegations of abusive domain name registration (Policy, paragraph 4(a)).
5. Parties’ Contentions
Complainant asserts that it is the holder of rights in the trademark "PORSCHE", that such mark is used in commerce, and that such mark has become well known in Europe and around the world to refer to its automotive products (see Factual Background, supra).
Complainant alleges that Respondent has registered disputed domain names that are identical or confusingly similar to its well-known mark. The domain names directly incorporate Complainant’s mark that is, in Complainant’s words, "the distinctive part of the domain name". It adds:
"The component ‘importer(s)’ is merely descriptive and suggests that there is a dealership agreement between the parties or the complainant is a licensee or is somehow sponsored, endorsed, authorized or supported by complainant in the use of the domain names. The Panels have constantly held that descriptive elements like these do nothing to prevent similarity (cf. Panel decisions Cases D2000-0047 - eautolamps.com; D2000-1039 - marutidealers.com; D2000-1291 - minoltacameras.com; D2000-1424 – armaniboutique; D2001-0102 - nike-shop.com and others; D2001-0174 - pepsi400.com und pepsisouthern.com)."
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain names. Respondent (1) has not used or evidenced preparation to use the names in connection with a bona fide offering of goods or services, (2) has not been known commonly known by the disputed domain names, (3) has never been authorized to act as a dealer in Complainant’s products, (4) has not made noncommercial use of the names and (5) has taken only the step of offering the disputed domain names for sale.
Complainant alleges that Respondent has registered and used the disputed domain names in bad faith: (1) because he has no legitimate interest in registering Complainant’s well-known mark; (2) he registered the names with the intention of selling them to Complainant or a competitor for a price in excess of his out-of-pocket expenses in connection with the names; (3) that he has engaged in a pattern of registering the well-known marks of others and preventing their registration as domain names by trademark holders; and (4) if Respondent were in fact an automobile importer/dealer, and were in fact using the disputed domain names on an active website, then he would be attempting to divert Internet users to his commercial website by creating confusion as to Complainant’s sponsorship of or affiliation with his website.
Complainant requests the Panel to direct the registrar to transfer the disputed domain names to it.
Respondent states in his own words:
"I reject the fact that I have used Porsche trademark. Porsche trademark is clearly ‘PORSCHE’. I am the registered owner of the domain name PorscheImporter.com and PorscheImporters.com this implies that I can buy Porsche cars, be them second-hand or new whether that be from the authorised main dealer or purchased from a private seller.
"I the respondent have full rights and have full legitimate interest in using both the name PorscheImporter.com and PorscheImporters.com (see document No1) which shows me standing out side of my last house with three Porsche cars on the driveway, two of these cars were imported, one from Jersey the other from Germany. In the UK at this present time many people are seeking to buy their Porsche cars, among others, from cheaper European sources such as Belgium, Spain, Holland, Germany etc. I can supply proof of cheap import cars as I have done so myself, (see document No 2). I have been a car dealer for many years but I am now setting up a website to help people import cheap cars. There has been various articles in the press, regarding companies supplying cheaper imports by going abroad such as ‘www.car-prices.com’ among many others. It has also be advertised on TV programmes such as Top Gear, by Mr Quinton Wilson who explained in detail how you can save money by buying abroad. On the BBC 7pm news 22nd July 2001 the DTI said that although some UK car dealers had put their prices down, the UK car buyer was still paying up to 50% more for the same car as compared to our European neighbours. The Daily Express 23rd July 2001 Document No3 ‘Only Germany’s BMW Mercedes and Audi appear to be treating British drivers the same’. The Automobile Association (AA) state that car makers view Britain as ‘Treasure Island’. My legitimate interest is to set up a website and to show people how they can avoid paying such high UK prices by going abroad possibly Germany, Holland and Belgium and buying them from a European dealer in the European market and bringing the same car, right hand drive back to England, pay the UK tax and in some cases make a 50% saving. If the person buying the car needs finance, (see document 4), showing Office of Fair Trading and Consumer Credit (renewal) plus Credit Brokerage. I believe that this act by [Complainant’s counsel] is not for a domain name it is actually the manufacturer trying to stop this practice and supporting the UK franchise dealer network."
"These domain names have been put on display on a website called <e-traders.tv>. This website is owned by my accountant. The sole intention of being on this site is to check for hits. Yes, people did send in bids on these names but none were ever sold, but it must be said that these names are traffic generating names as I have not yet decided on a name for the site, and like any business they have a certain value and it would be madness to say that if a certain price was offered for a particular name that it could not be sold, this is by no way bad faith just good business sense. In short none of these domain names have ever been sold through e-traders and this puts any bad faith claim away. I have not bought these names in bad faith and will be setting up a website. This is witnessed and acknowledged by [Complainant’s counsel] under Respondents Activities where he states ‘where the visitor is informed that this site has been registered for a client who has not yet moved in’ I am merely adding value to these names by checking on hits or bids."
"The final website that I will trade on is unclear at this moment. I have two claims in for a dot biz and dot info name. I have also got IP claim string on a dot biz name. If I am successful in achieving one of these new domains I will then set the site up under one of these names but if not I have to look elsewhere for another name but the sole intention of the names that you find listed is to act as traffic catchers for my site. If someone wants to import a Porsche they will probably type in Porsche importers which will take them to my main website which is to be called dot biz? or dot info?"
"I have not included Porsche-Importer.com or Porsche-Importers.com in the above as I have chose not to renew these names."
"The internet is about changing the way we buy, (see document No. 3) . Government Ministers a year ago ‘condemned the industry as anti-competitive’ and goes on to say ‘Change the way cars are sold’."
6. Discussion and Findings
The Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999, (with implementing documents approved on October 24, 1999), is addressed to resolving disputes concerning allegations of abusive domain name registration The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g. paragraph 2(a), Rules).
In this case, the Panel is satisfied that WIPO took all steps reasonably necessary to notify the Respondent of the filing of the complaint and initiation of these proceedings. Respondent has filed a response to the complaint indicating that he received notice and was afforded an adequate opportunity to respond.
As a preliminary matter, the Panel notes that the Complainant in this proceeding is an enterprise based in Stuttgart, Germany and Respondent is an individual residing in the United Kingdom. The Rules prescribe that "A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable." In addition to the Policy, the Panel will refer as appropriate to the laws of the European Union regulating trademarks applicable in Germany and the United Kingdom, and to the United Kingdom Trade Marks Act.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:
(i) Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) Respondent’s domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
Complainant is the holder of the registered trademark "PORSCHE" and uses that mark in commerce (see Factual Background supra). The "PORSCHE" mark is well known in the United Kingdom, Germany and around the world. Complainant’s rights in the mark arose at least as early as August 26, 1953, the date of the first registration at the German Patent Office submitted in this proceeding, and arose in the United Kingdom at least as early as April 14, 1954, the date that the mark was registered on the Trade Marks Register by the U.K. Patent Office. Complainant’s rights in the mark substantially predate Respondent’s registration of the disputed domain names in June and July 2000.
Respondent has registered the domain names <porscheimporter.com>, <porscheimporters.com>, <porsche-importer.com> and <porsche-importers.com>. Each of these names begins by directly incorporating Complainant’s well-known mark, adds (with or without a hyphen) the term "importer" or "importers" and the generic top level domain (gTLD) ".com".
The Policy requires the Panel to determine whether the disputed domain names are identical or "confusingly similar" to Complainant’s mark. This determination is common to EU and British law on trademark infringement that inquires into "likelihood of confusion on the part of the public" . Professor Cornish has summarized the views of the British courts evaluating likelihood of confusion, observing that "these decisions all looked at the circumstances overall in order to determine whether there was, in a realistic sense, some likelihood of confusion .
In the present proceeding, Respondent has combined Complainant’s well-known mark with term "importer/s" that describes an activity (that is, the transportation into a country of products from another country or territory) that would commonly be associated with a producer or dealer in automobiles. The combination "Porsche Importer" uses Complainant’s mark as the principal identifier of a business that engages in trade of Complainant’s products. Although it is possible that some members of the public, in viewing the disputed domain names, will conclude that persons other than Complainant are acting as importers of Porsche automobiles, there is nevertheless a likelihood that the public, viewing the domain names, will draw that conclusion that Complainant is the enterprise that is undertaking to provide the subject products. The public (in this case Internet users) will be confused as to the source of the products or sponsorship of the activities.
There is nothing in the disputed domain names that would signal the public that Respondent is distinguished from Complainant, such as by use of the terms "Second Hand" or "Used".
Respondent is not in fact using Complainant’s mark in a business. He has only offered the disputed domain names for sale. There is nothing therefore on a website or elsewhere that would seek to dispel the confusion that is likely to arise from use of the disputed domain names standing alone.
The addition of the gTLD ".com" does not dispel Internet user confusion because domain name registrants must make use of a gTLD, and ".com" does not in this case signal that Respondent is distinct from Complainant.
The Panel determines that the disputed domain names are confusingly similar to Complainant’s well-known mark. Complainant has established the first element of abusive registration and use of the disputed domain names.
The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii)
(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 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." (Policy, paragraph 4(c))".
The Panel notes that Respondent was obviously aware of Complainant’s rights in its mark prior to registration of the disputed domain names, and might well be assumed to have been aware of a dispute at the time he undertook to register them. In any event, although Respondent has asserted his preparations to make use of the disputed domain names to make a bona fide offering of goods or services, he has not provided the Panel with evidence adequate to support this claim. A photograph of Respondent standing alongside two or three Porsche automobiles at his alleged former residence does not remotely establish Complainant as a dealer in Porsche automobiles. Nor does an invoice for purchase of a single Land Rover, or his registration to carry on a consumer credit business.
Respondent also appears to assert that he is making fair use of the Complainant’s mark in the disputed domain names. Because the Panel takes the view that only determinations necessary to the outcome of administrative proceedings should be made, it will not address here the circumstances under which a fair use of Complainant’s mark might be made, except to note that there is a substantial number of judicial decisions in Europe (including the United Kingdom) regarding the circumstances under which a trademark may be fairly used in the course of trade by a person other than the trademark holder. The Policy, however, provides the possibility for establishing rights or legitimate interests in a domain name only when the registrant of the name is "making" fair use of the name, and it is clear in this case that Respondent has not made any use of the disputed domain names other than to offer them for sale. Although there may be some reasonable time lag between the registration of domain names and their "fair" use, in this case the domain names were registered one year before the initiation of this dispute, and this is not a reasonable time lag under the particular circumstances.
Respondent has failed to establish rights or legitimate interests in the disputed domain names. Thus, Complainant has established the second element necessary to prevail on its claim that Respondent has engaged in abusive domain name registration and use.
The Policy indicates that certain circumstances may, "in particular but without limitation", be evidence of bad faith (Policy, para. 4(b)). Among these circumstances are (1) that the domain name has been registered or acquired by a respondent "primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [respondent’s] documented out-of-pocket costs directly related to the domain name" (Id., para. 4(b)(i)); (2) that a respondent has registered the domain name "in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct" (id., para. 4(b)(ii)), and (3) that a respondent "by using the domain name, … [has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] web site or location of a product or service on [its] web site or location" (id., para. 4(b)(iv)).
Respondent posted the disputed domain names incorporating Complainant’s well-known mark for sale, and set "reserve prices" substantially in excess of his out-of-pocket expenses in connection with the names. He received offers for these names, but did not reach his reserve bid price. Respondent has also offered for sale domain names incorporating numerous other well-known marks of automobile companies.
The list of factors constituting bad faith under the Policy is illustrative, not exhaustive.
Regardless whether Respondent intended to offer the disputed domain names for sale specifically to Complainant or a competitor, Respondent had no rights to offer for sale or sell rights in Complainant’s marks to any person, and to make substantial profits from such sales. Respondent does not avoid responsibility for his acts based on his assertion that his accountant posted the names for sale to research the level of hits on the names for his future business purposes. The Panel must draw reasonable conclusions from evidence presented to it, and in this case the reasonable conclusion is that Respondent offered the disputed domain names for sale in order to profit from the well-known mark incorporated in them.
The Panel determines that Respondent acted in bad faith within the meaning of paragraph 4(a)(iii) and 4(b) of the Policy by registering and using the disputed domain names by offering them for sale at prices substantially in excess of his out-of-pocket expenses in connection with the names.
In light of this determination, the Panel need not also determine whether Respondent has engaged in a pattern of registering the marks of Complainant and others to prevent them from registering them in domain names.
Complainant has established the third and final element necessary for a finding that the Respondent has engaged in abusive domain name registration and use.
The Panel will therefore request the registrar to transfer the domain names <porscheimporter.com>, <porscheimporters.com>, <porsche-importer.com> and <porsche-importers.com> to the Complainant.
Based on its finding that the Respondent, Charlie Brown, has engaged in abusive registration and use of the domain names <porscheimporter.com>, <porscheimporters.com>, <porsche-importer.com> and <porsche-importers.com> within the meaning of paragraph 4(a) of the Policy, the Panel orders that the domain names <porscheimporter.com>, <porscheimporters.com>, <porsche-importer.com> and <porsche-importers.com> be transferred to the Complainant, Dr. Ing. h.c.F. Porsche AG.
Frederick M. Abbott
Dated: September 15, 2001
1. British trade mark law has implemented the requirements of the First Council Directive of 21 December 1988 to approximate the laws of the Member States relating to trade marks in the Trade Marks Act of 1994. See W.R. Cornish, Intellectual Property: Patents, Copyright, Trade Marks and Allied Rights (4th ed. 1999), chap. 17.
2. Id., at 17-96.