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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dr. Ing. h.c. F. Porsche AG v. Takeda, Jim
Case No. D2002-0994
1. The Parties
The Complainant is Dr. Ing. h.c. F. Porsche AG, Porscheplatz 1, 70435 Stuttgart, Germany, represented by Lichtenstein, Körner & Partners of Germany.
The Respondent is Takeda, Jim, 8061 McGregor Avenue, Burnaby, BC V5J 4H7, Canada.
2. The Domain Name and Registrar
The disputed domain name <porschefinance.com> is registered with Network Solutions, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 24, 2002. On October 24, 2002, the Center transmitted by email to Network Solutions, Inc., a request for registrar verification in connection with the domain name at issue. On October 29, 2002, Network Solutions, Inc. 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"). An amendment to the Complaint was filed on October 30, 2002.
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 October 30, 2002. In accordance with the Rules, paragraph 5(a), the due date for Response was November 19, 2002. The Respondent submitted an informal e-mail response on October 30, 2002. Respondent made subsequent e-mail submissions with the final submission dated November 21, 2002.
The Center appointed Mark V.B. Partridge as the sole Panelist in this matter on December 6, 2002. 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 has used the PORSCHE name and mark for sports cars for more than 50 years. As a result of extensive sales and advertising, the PORSCHE mark has become famous and widely known. For many years Complainant has also been offering financial services to its customers, in particular through leasing contracts and loans.
Complainant is the owner of many trademark registrations consisting of or incorporating the word PORSCHE. Complainant owns trademark registrations in Canada, Respondent’s country of residence, that encompass the use of the mark for automobiles and related services including rental and leasing. Complainant has also registered the PORSCHE mark for financial services in Germany and the United States.
The Domain Name was registered by Respondent on August 22, 2002.
The domain name resolves to a web site titled "Porsche & premium car financing – PorscheFinance.com". The web site has a photo of a Porsche 911 and states in part: "PorscheFinance.com offers enthusiasts with several low cost financing options for your new or used Porsche. Auto financing is available for all premium vehicles including financing for Lexus, mercedes benz, bmw, acura, infiniti, jaguar and auto financing for all vehicle types.[sic]"
There is no indication that Respondent is actually engaged in the bona fide offering of financial services.
On August 22, 2002, Respondent offered the Domain Name for sale on the online auction site "ebay.com" at an asking price of US$50,000.
On August 24, 2002, Respondent offered the domain name for sale to an individual potential buyer for "$35k US$ or contra for a 928GT or newer 911 and vehicle transfer to Vancouver".
On October 14, 2002, Respondent again attempted to sell the Domain Name on "ebay.com". When Complainant became aware of the situation the auction was immediately reported to ebay and terminated.
When Complainant filed the notice of infringement with ebay it simultaneously sent by e-mail a cease and desist letter to the Respondent demanding the transfer of the domain name claiming a trademark infringement.
On the same day, Respondent replied by e-mail denying that PORSCHE is a protected trademark, claiming that it became descriptive of a "sport car" or, in contradiction to that, of a "concept", "to describe an ‘ideal’ or ‘principle’ of ‘absolute perfection’ or ‘perfect engineering’ rather than marketing of a mechanical vehicle or automobile".
Respondent further claimed:
"As a media agency, I have a right to inform and direct people of various products and services including those of Porsche AG as Porsche does commercially sell transportation products and services to consumers throughout the world."
Respondent also stated:
"I have a great personal love, respect and interest in Porsche engineered cars and although I been watching the various domain cases being put forward by Porsche in Virginia and other jurisdictions and would prefer this not go to litigation. I am offering to settle in complete confidentiality, I have not discussed this development with anyone and if your client reimburses the registration cost for this domain of US$35 and a contra of a new 911, 996, boxster or older 928GT class vehicle as contra."
In its response to this proceeding, Respondent restates its willingness to sell the domain name for the following "equitable consideration:"
"1. $35.00 USD as the registration cost of this domain
2. A 2002 Porsche 911, 996, Boxster or 1993 928 GT class vehicle
3. A written promise by Porsche AG to compensate and make amends for any and ALL illegal infractions and wrongs committed . . . during its wartime involvement . . ."
5. Parties’ Contentions
Complainant contends that the Domain Name is confusingly similar to the PORSCHE mark, that Respondent lacks any right or legitimate interest in the Domain Name, and that Respondent has registered and used the Domain Name in bad faith by trafficking in the sale of the Domain Name for profit.
Respondent provides the following summary of its position:
"1. The domain name was conceptualized, available and purchased legally through legal channels through a legal Internet registrar.
2. As a free and open society in markets in which Porsche AG has sold its transportation products and in any market in which consumers own these products, as a media entity PorscheFinance.com has a right to offer pure currency products to consumers as an ‘option to choose’ to finance their specialty vehicle as well as offer information to consumers informing them of the existence of public forums discussing Porsche AG, Porsche AG official new and used vehicle, and non Porsche aftermarket products and services."
6. Discussion and Findings
A. Identical or Confusingly Similar
The Domain Name is confusingly similar to a Complainant’s famous PORSCHE mark. Respondent’s contention that the mark is unenforceable is not supported by any probative evidence and is undermined by Respondent’s own recognition of the mark as Complainant’s trademark. The addition of "finance" to the famous PORSCHE mark does not avoid confusion. The Complainant has shown that it provides financing services. Thus, the term is an apt description of services likely to be associated with Complaint. Persons encountering Respondent’s use of the phrase "Porsche Finance" are likely to believe incorrectly that it identifies services from, authorized by or legitimately connected with Complainant.
B. Rights or Legitimate Interests
The evidence presented by Complainant indicates that the web site operated by Respondent is a sham and does not constitute a bona fide use of the Domain Name. Respondent has not rebutted that evidence. There is no showing that Respondent is engaged in the bona fide offering of goods or services under the Domain Name or that it has any demonstrable plan to do so. Instead, it appears that the web site was created solely as a false façade to hide Respondent’s intent to traffick in the sale of the Domain Name. Further, even assuming Respondent did offer automobile financing services, the use of Complainant’s mark to attract attention to the site would constitute a deliberate infringement of Complainant’s rights and would not be justified as non-commercial or fair use. I therefore find that the Respondent lacks any right or legitimate Interest in the Domain Name.
C. Registered and Used in Bad Faith
I agree with Complainant that Respondent’s conduct shows that the Domain Name was registered and used in bad faith for the sole purpose of selling the Domain Name for profit without any right or legitimate interest to justify such sale. The conduct present here appears to be blatant cybersquatting: the very day the domain name was registered, it was offered for sale on "ebay.com" at a price of $50,000.
Respondent has replied with the following justification:
"PorscheFinance.com as the owner of this domain has a right to assess its market values and promote its existence and awareness in however it seems fit in any legal medium provided through Internet or traditional media channels."
Respondent is wrong. The evidence shows Respondent was seeking to sell the Domain Name, not "assess its market values or promote its existence and awareness." Respondent claims to be well-aware of Complainant’s successful efforts to protect the PORSCHE mark from cybersquatting. Therefore, Respondent knows that a domain name owner has no right to traffick in the sale of domain names that are identical or confusingly similar to another’s trademark. He should not be surprised by this decision.
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 <porschefinance.com> be transferred to the Complainant.
Mark V.B. Partridge
Dated: December 21, 2002