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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 Respondent’s 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,
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
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
Complainant’s 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 Respondentґs domain
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 Complainant’s 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 Complainant’s 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
This is also a case of general bad faith because Respondent intentionally and
systematically uses false contact information in the whois records to evade
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
The Panel’s findings under each heading with reference to the parties’ contentions,
the Policy, Rules, Supplemental Rules and applicable substantive law are the
A. Identical or Confusingly Similar
Complainant has proven that he is the owner of the trademarks "PORSCHE"
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 Complainant’s trademark does not eliminate the identity or, at least
the similarity between Complainant’s 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 Complainant’s 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
Complainant’s trademark is associated with a third party’s 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 Complainant’s 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 Complainant’s trademarks are not invented words but respectively the
name of a person ("Porsche") and a number ("911"), the facts
brought to the Panel’s 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 Complainant’s 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
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 (L’Air 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
The Panel considers that the transfer of <911hyundai.com> would violate
a third party’s 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
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
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