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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dr. Ing. h.c. F. Porsche AG v. MACROS-TELECOM corp.
Case No. D2001-0993
1. The Parties
The complainant in this administrative proceeding is Dr. Ing. h.c. F. Porsche AG, ("Complainant"), a private company limited by shares, incorporated under the laws of Germany, with its main business address at Porscheplatz 1, 70435 Stuttgart, Germany. Complainant's authorized representative is Dr. Rolf Diekmann, Attorney-at-law, Lichtenstein, Körner and Partners, Heidehofstrasse 9, 70184 Stuttgart, Germany.
According to registrar's WHOIS database, the respondent is MACROS-TELECOM corp. ("Respondent"), room 340, 24 Lenin st, Omsk, Siberia 644024, Russia.
2. The Domain Name and Registrar
The domain name at issue is <porsche-usa.com> ("Domain Name"), registered with OpenSRS c/o Tucows, Inc. ("Registrar") of 96 Mowat Avenue, Toronto, Ontario, M6K 3M1, Canada.
3. Procedural History
A complaint ("Complaint"), pursuant to the Uniform Domain Name Dispute Resolution Policy, implemented by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999 ("Policy"), and under the Rules for Uniform Domain Name Dispute Resolution Policy, implemented by ICANN on the same date ("Rules"), was submitted to the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center") on August 3, 2001, by e-mail and was received on August 6, 2001, in hardcopy.
The Acknowledgement of Receipt of Complaint was submitted to the Complainant and Respondent by the WIPO Center on August 7, 2001.
On August 8, 2001, a Request for Registrar Verification was transmitted to the Registrar, which confirmed with its Verification Response of August 10, 2001, that the disputed Domain Name was registered with OpenSRS c/o Tucows, Inc. and that Respondent, MACROS-TELECOM corp., was the current registrant of the disputed Domain Name. The reply also contained contact information for the Respondent.
The assigned WIPO Center Case Manager completed a Formal Requirements Compliance Checklist on August 10, 2001, without recording any formal deficiencies.
The Panel independently determines and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the applicable requirements.
A Notification of Complaint and Commencement of Administrative Proceeding ("Commencement Notification") together with a copy of the Complaint (without attachments) was transmitted to Respondent by e-mail (firstname.lastname@example.org) on August 14, 2001, setting a deadline of September 3, 2001 by which Respondent could file a response to the Complaint. In addition, on August 17, 2001, the aforementioned documents were successfully delivered by DHL courier service to the available postal address of Respondent.
Having reviewed the communications' records in the case file, the Panelist finds that the WIPO Center has discharged its responsibility under paragraph 2(a) of the Rules to "employ reasonably available means calculated to achieve actual notice to Respondent".
On September 20, 2001, having received no Response from Respondent, the assigned WIPO case manager transmitted by e-mail a Notification of Respondent Default to Respondent.
Complainant requested a single-member panel. Since Respondent failed to submit a response, the WIPO Center invited the undersigned to serve as sole panelist in Case No. D2001-0993 and transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence which was duly signed and returned to the WIPO Center on October 1, 2001.
The WIPO Center transmitted to the parties on October 2, 2001, a Notification of Appointment of Administrative Panel and Projected Decision Date as of October 16, 2001. The Administrative Panel finds that it was properly constituted and appointed in accordance with the Policy, the Rules and the WIPO Supplemental Rules.
4. Factual Background
The following facts and statements appear from the Complaint and its annexed documents which have not been contested by Respondent:
Complainant, Dr. Ing. h.c. F. Porsche AG, is an internationally very well-known manufacturer of high performance sports cars. It is undisputed that Complainant is the registered owner of numerous trademarks consisting of or incorporating the word "Porsche". Among others, copies of the following trademark registrations have been submitted with the Complaint:
- German trademark registration No. 643 195 [Annex 3];
- International trademark registration No. 179 928 [Annex 4,5 and 6];
- European Community trademark registration No. 000073098 [Annex 11];
- US trademark registration No. 0618933 [Annex 10].
In the Russian Federation (formerly Soviet Union), the trademark "Porsche" is protected trough International trademark registration No. 459 706 in several car related service classes [Annex 7, 8 and 9].
The disputed Domain Name <porsche-usa.com> was registered by Respondent on February 15, 2000.
5. Parties’ Contentions
Complainant contends that:
- the domain name <porsche-usa.com> is confusingly similar to the trademark "Porsche" in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the Domain Name; and
- the Domain Name was registered and is being used in bad faith; and
- the domain name <porsche-usa.com> should be transferred to the Complainant.
Additional respective contentions of the Complainant may be contained in the following discussions and findings.
As mentioned above, Respondent has been notified in accordance with paragraph 2(a) of the Rules, but failed to submit a response in accordance with the requirements under the Policy. Thus, Complainant's allegations are deemed to be non contested.
6. Discussion and Findings
Paragraph 4(a) of the policy directs that the Complainant must prove each of the following:
"(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith."
Identical or confusingly similar Domain Name: Policy 4(a)(i)
Complainant contends that the domain name <porsche-usa.com> is confusingly similar to the trademark "Porsche".
Complainant is the holder of the registered trademark "Porsche", which obviously is identical with the first and relevant part of the disputed Domain Name <porsche-usa.com>. In comparison with Complainant's trademark, the disputed Domain Name bears the additional word, respectively, suffix "usa". However, the word "usa" is a generic term and therefore not a distinctive element for a trademark. In addition, given the world-wide reputation of Porsche as a high-class sports car, the trademark component "Porsche" clearly dominates the disputed Domain Name.
In any event, the Respondent has not contested this point.
Accordingly, the Panel holds that the Complainant has established element (i) of the Policy's paragraph 4(a).
Respondent's Rights or Legitimate Interests in the Domain Name: Policy 4(a)(ii)
It is first convenient to recall that, according to paragraph 4(c) of the Policy, a Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
"(i) before any notice to you [Respondent] 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 [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trade mark or service mark rights; or
(iii) you [Respondent] 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 trade mark or service mark at issue."
Respondent has not provided any evidence of legitimate rights or interests in the above sense, and has not shown any other circumstances reflecting right or legitimate interest in the disputed Domain Names.
In the absence of any indications as to a legitimate interest of Respondent to use the Domain Names, the Panel finds that Complainant has fulfilled its burden of proof under paragraph 4(a)(ii) of the Policy.
Domain Name Registered and Used in Bad Faith: Policy 4(a)(iii)
The third element to be established by Complainant is that the Domain Name has been registered and used in bad faith.
Paragraph 4(b) states the following four (non-exclusive) circumstances which, if found to be present, are deemed to provide evidence of bad faith in registering and using the Domain Name:
"(i) circumstances indicating that you [Respondent] have registered or you [Respondent] have acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant who is the owner of the trade mark or service mark, or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Domain Name.; or
(ii) you [Respondent] have registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding Domain Name, provided that you have engaged in a pattern of such conduct; or
(iii) you [Respondent] have registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or your location."
Complainant alleges that Respondent registered and used the Domain Names in bad faith. In particular, Complainant alleges, and Respondent does not deny, that the disputed Domain Name is being offered for auction on the web site <porsche-usa.com> which has been registered by Respondent [Annex 14 and 1]. Further, on July 10, 2001, Complainant's attorney, Dr. Diekmann, sent a cease and desist letter to the Respondent [Annex 15], but did not receive any answer.
It is a fact, that the disputed Domain Name currently relates to a web site where the sign "BrandINC" as well as the disputed domain name <porsche-usa.com> are dominantly being displayed at the top. Any visitor is informed that "this domain name is for sale" and encouraged to "quote your best price". The domain name <porsche-usa.com> is offered "either into full ownership or for temporary use". Whoever is interested may enter a price and give his name and e-mail address. For this purpose a prepared form is presented on the web site and the request can directly be sent to the Respondent. There is also a hyperlink to "the rest of our domain names for sale". By activating this hyperlink the user is automatically taken to the web site "0P.com/showdom". It should be noted that Respondent appears to be a professional dealer in domain names since Respondent is the registrant of the said web site "0P.com/showdom", where a large number of domain names are being offered for sale. Complainant has produced a list of domain names and WHOIS database search to underline this fact [Annex 12, 13].
Even though the disputed Domain Name is offered without "price tag", it is clear that an excessive amount is being sought - a fact that is clearly underlined by the ongoing auction. It must be assumed, that the price at which the disputed Domain Name is offered for auction, respectively, the amount which is being sought, is by far higher than any out-of-pocket costs directly related to this Domain Name and this fact by itself is one of the indications mentioned in the Policy for bad faith.
Additionally, in WIPO Case No. D2000-0003 (<telstra.org>), paragraphs 7.9 to 7.11, as well as in other WIPO decisions, it was ascertained that a passive holding of a domain name may be sufficient to constitute bad faith, taking into consideration the overall context of Respondent's behavior. In the present case, the following circumstances seem relevant in this respect: Complainant's trademark is well very known and reputed throughout the world; Respondent provided no evidence of any good faith use of the disputed Domain Names, and does not seem to have associated the Domain Name with any serious activity or any genuine web site presence of his own until today.
In an overall assessment of the contentions and the facts mentioned above, the Panel concludes that the requirements of paragraph 4(a)(iii) of the Policy have been sufficiently made out by the Complainant, and that Respondent's bad faith registration and use of the Domain Names have been proven.
In view of the circumstances and facts discussed above, the Panelist decides that the disputed Domain Name is confusingly similar to the registered trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Respondent's Domain Name has been registered and is being used in bad faith.
Accordingly, pursuant to paragraph 4(i) of the Policy, the Panelist requires that the disputed Domain Name, <porsche-usa.com>, shall be transferred to the Complainant.
Bernhard F. Meyer-Hauser
Dated: October 16, 2001