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and Mediation Center
Dr. Ing. h.c. F. Porsche AG v. theboxster, Inc., 911-cars,
Case No. D2004-0284
1. The Parties
The Complainant is Dr. Ing. h.c. F. Porsche AG of Stuttgart, Germany, represented by Lichtenstein, Kцrner & Partners of Stuttgart, Germany.
The Respondents are theboxster, Inc. and 911-cars, Inc. of Antigua and Barbuda.
2. The Domain Names and Registrar
The disputed domain names: <my911cars.com>, and <theboxster.com>,
(“domain names”) are registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 21, 2004. On April 21, 2004, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the domain names at issue. On April 21, 2004, Tucows Inc. transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrants and providing the contact details for the administrative and technical contacts. 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 Respondents of the Complaint, and the proceedings commenced on April 26, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was May 16, 2004. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on May 27, 2004.
The Center appointed Mladen Vukmir as the sole panelist in this matter on June 1, 2004.
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
The Complaint is based on Complainant’s rights in the marks 911 and BOXSTER, which Complainant maintains are either identical or confusingly similar to the domain names.
Complainant has been a maker of sports cars for more than half a century and uses the PORSCHE mark as the prominent and distinctive part in its trade name. Porsche introduced the 911 model in the 1950’s and the BOXSTER model in 1995. The Complainant owns trademarks for the marks in a number of countries around the world (several United States registrations, Germany, the European Community and International registrations). Trademark registrations have been held for PORSCHE since 1953, for 911 since 1996, and for BOXSTER since 1993.
Complainant provided the Panel with various registration certificates in the United States, Germany and the European Union for all three marks (Annexes 5 – 26). Among others, the following are some of the applicable trademark registrations:
United States Federal Trademark No. 2414167, filed February 14, 2000, reg. December 19, 2000;
German Trademark No. 39601333.3, reg. June 13, 1996;
European Community Trademark No. 21089, filed April 1, 1996, reg. June 8, 1999, in Cl. 12;
European Community Trademark No. 1206085, filed June 14, 1999, reg. April 4, 2003, in Cl. 3, 8, 9, 14, 16, 18, 21, 24, 25, 28, 33, 34, 35, 36, 37, 39, 42;
United States Federal Trademark No. 2819210, filed February 3, 2003, reg. March 2, 2004, in Cl. 9, 12, 28;
United States Federal Trademark No. 2802041, filed February 3, 2003, reg. January 6, 2004, in Cl. 18;
United States Federal Trademark No. 2797260, filed February 3, 2003, reg. September 30, 2003, in Cl. 11 (Flashlights);
United States Federal Trademark No. 2719094, filed July 2, 2002, reg. March 4, 2003, in Cl. 28;
United States Federal Trademark No. 2699769, filed December 13, 2001, reg. December 31, 2002, in Cl. 18;
United States Federal Trademark No. 2154430, filed May 8, 1995, reg. May 5, 1998, in Cl. 16;
United States Federal Trademark No. 2154427, filed May 8, 1995, reg. May 5, 1998, in Cl. 9;
United States Federal Trademark No. 2045393, filed May 8, 1995, reg. March 18, 1997, in Cl. 14;
German Trademark No. 2034385; reg: April 13, 1993, in Cl. 12;
International Registration No. 604881, reg. June 11, 1993, in Cl. 12;
International Registration No. 607356, reg. August 21, 1993, in Cl. 28;
International Registration No. 623956, reg. August 31, 1994, in Cl. 09, 14, 18. International Registration No. 628605, reg. December 20, 1994, in Cl. 03, and 25.
International Registration No. 645597, reg. May 10, 1995, in Cl. 03, 08, 09, 11, 12, 14, 16, 18, 20, 21, 24, 28, 30, 33, 34.
The pertinent Annexes represent the copies of the printouts from the public
databases of the respective Intellectual Property offices. The Panel accepts
these submissions as evidence of the existence of valid trademark rights relevant
in this administrative dispute.
5. Jurisdictional Basis
The dispute is within the scope of the Policy and the Panel has jurisdiction to decide the dispute. The Registrar’s registration agreement incorporates the Policy. The domain names were registered on October 30 and November 11, 2003, respectively.
The Complainant avers that each of the requirements of Paragraph 4(a) of the
Policy has been satisfied and the Respondents are therefore required to submit
to a mandatory administrative proceeding.
6. Parties’ Contentions
The Complainant asserts that as a maker of sports cars, it utilizes the PORSCHE, 911 and BOXSTER trademarks registered throughout the world and that these trademarks enjoy a reputation of high quality and performance. The Complainant further alleges that it operates its principal web site at “www.porsche.com” which opens gates to web sites suited for users worldwide.
It is asserted that since the 1950ґs the most successful line of PORSCHE sports cars is the 911 model and that the second line of sports cars, the BOXSTER was introduced in 1995 and soon became a forerunner of a new and powerful breed of roadsters. Both 911” and BOXSTER are trademarks protected throughout the world. All of these trademarks enjoy a reputation for high quality and performance.
The Complainant also contended that none of the Respondents could be located. The Complainant goes on to provide a sequence of related facts that point to Canadian-based Frank Colubriale, the owner of the company Maxis Media Studios that designed a number of Porsche web sites (including the two disputed ones), as being the person behind the whole operation.
The Complainant stated that both disputed domain names are used to redirect visitors to web sites that are designed to promote gambling, and information given on the PORSCHE, 911 and the PORSCHE BOXSTER is trite.
In the analysis of the alleged noncompliance by the Respondents’ with the requirements of the UDRP and the Rules, the Complainant is offering the following arguments:
(i) It asserts that the disputed domain names are confusingly similar to Complainant’s
trade name and trademark and 911 and BOXSTER, respectively, and that the trademarks
are well-known all over the world and integrated in their entirety into the
contested domain names. Further, the Complainant submits that ‘911’
and ‘boxster’ form the distinctive parts in both contested domain
names and that the extension indicating the Top-level-domain “.com”
does not prevent confusion as so held by numerous panel decisions (since Telstra
Corporation Limited v. Nuclear Marshmallows, WIPO
Case No. D2000-0003).
The Complainant holds that a descriptive component like ‘my…cars’ or ‘the’ even adds to the confusion because the user is made to believe that the trademark owner or some entity associated with it operates an information platform for the car models indicated in the names, in particular, when the web sites to which the domain names redirect deal with these same car models.
The Complainant further holds that a disclaimer on the web site does not prevent
the confusing similarity because at this stage of the UDRP test only the domain
name itself matters (see WIPO Case No. D2001-0763,
Myer Stores Limited v. Mr. David John Singh <myeronnline.com>,
and WIPO Case No. D2000-0222, DaimlerChrysler
Corporation v. Brad Bargman, <dodgeviper.com>).
The Complainant concludes that, finally, the wording that the Respondents have placed on each page is not even a disclaimer in the true sense of the word, because Respondents do not disassociate themselves from the Complainant and that the web sites appear to be operated by the Complainant or a licensee.
(ii) The Complainant asserts that the Respondents have no rights or legitimate interests in respect of the domain names and that there is no use nor are there any preparations to use the domain names with a bona fide offering of goods or services (Paragraph 4(c)(i), Policy).
It is asserted that the Respondents are not just offering information on the various Porsche cars but use this also as a pretext to promote gambling. Importantly, the Complainant maintains that it is common for web site owners to get paid for any link brought to high profit web sites like gambling sites and concludes that the Respondents earn money by improperly using Complainant’s trademarks. The basic concept behind Respondents’ business is to trick the user into believing that these are web sites operated by or at least sponsored or endorsed by Complainant where, in reality, all of its web sites are about gambling and linking.
It is asserted that the Respondents are not and never have been authorized dealers of Complainant’s products and there is not and never has been a business relationship between the parties.
It is pointed out that the Respondents are not commonly known by the domain names (Paragraph 4(c)(ii)), although the names of the fictitious corporations that appear as the Registrants do actually correspond to the domain names.
Also, the Complainant feels that the Respondents are not making noncommercial use of the domain names (Paragraph 4(c)(iii)).
(iii) In respect of bad faith, specifically Paragraph 4(a)(iii) of the Policy, the Complainant asserts that the Respondents have registered and are using the disputed domain names in bad faith, because the Respondents were aware of Complainant’s trademarks.
In respect of Paragraph 4(b)(iv), the Complainant points out that the Respondents have registered and used the domain names in bad faith because they intentionally mislead and trap users who seek genuine information about the Complainant and its products. As mentioned above, there is nothing in the domain names or the web sites to indicate that the Respondents are not the Complainant.
The Complainant finally concludes that:
(a) the domain name is confusingly similar to Complainant’s 911 and BOXSTER marks,
(b) the Respondents have no rights or legitimate interests in the domain names, and that
(c) the domain names are registered and have been used in bad faith. Respondents’ bad faith includes use of web sites where visitors expect information on Porsche cars, to promote and distribute information concerning gambling.
The Respondents did not reply to the Complainant’s contentions.
7. Procedural aspects
As a rule, under the Policy and the Rules a case cannot be brought against multiple respondents. Article 3(c) of the Rules specifically provides that a complaint may relate to more than one domain name, provided that they are registered by the same domain name holder. However, in spite of the silence of the Rules on this point, the Panel holds in accordance with Paragraph 10(e) that situations may arise in which multiple domain name holders should be equated with one domain name holder for the purpose of this provision, so that a complaint against more than one domain name holder should be allowed. Such a situation arises here, as discussed below, due to the likely fictitious nature of the Respondents.
As the Respondents have elected not to respond, they have not contradicted, inter alia, the assertion of Complainant that, in fact, they are a disguise for one person who is the true owner of the domain names, and whom the Complainant speculates to be Frank Colubriale of Lachine, Quebec, Canada.
By virtue of Rule 14(b), the Panel is entitled to draw such inferences as it deems appropriate from the Respondents’ failure to respond to this assertion. The evidence that Complainant has provided to establish the connection between the domain names and Mr. Colubriale proves a sound and logical sequence of facts and indicates the involvement of Mr. Colubriale and is consistent with a certain evasive pattern of behavior found on the Internet from time to time as described above.
Especially in light of the Complainant’s assertion that the Registrants are fictitious corporate bodies whose existence could not be verified, and in complete absence of any answer by Respondents to such allegations, the Panel finds that it might have been Respondents’ intention to incur great costs, to raise many obstacles and to cause as much effort as possible for the Complainant in protecting its rights. Such behavior of the Respondents is consistent with their attempts to present the overall content of the disputed sites as the “fan” sites for the respective car models, thereby trying to defuse the conclusion of the necessary legal analysis in respect of their legitimate interest. A further example of this approach is adding the component ‘my…cars’ to the domain name <my911cars.com>. The Panel feels that the Respondents actually attempted to consciously and systematically render the pertinent UDRP legal analysis as difficult as possible in light of previous case law by creating an ambiguous legal situation.
In view of the evidence presented and the fact that the Respondents have not
contested the Complainant’s arguments, the Panel accepts Complainant’s
assertion that the registrants of the domain names are to be regarded as one
and the same in the context of this proceeding. (See Washington Mutual, Inc.
v. Phayze Inc., Peter Carrington and Party Night, Inc., WIPO
Case No. D2003-0283). The Panel holds that the technical properties of the
Internet should not be to the advantage of Respondent only, who can use them
to cheaply multiply their apparently fictitious entities, but that the UDRP
process is also meant to strike a balance between the technically savvy Registrant
and a rightful trademark owner, by allowing for the UDRP process to reflect
the technical nature and the possibilities of the Internet properly in law.
The Panel, therefore, allows the single Complaint
in relation to all apparently fictitious Respondents, which for the purposes
of this proceeding are considered to be a single entity.
8. Discussion and Findings
A. Respondents’ Default
The Panel now proceeds to consider this matter on the merits in light of the Complaint, the lack of Response, the Policy, the Rules, the Supplemental Rules, and other applicable legal authority, pursuant to Paragraph 15(a) of the Rules.
Paragraph 4(a) of the Policy provides that Complainant must prove, with respect to the domain name, each of the following:
(i) The domain name is identical or confusingly similar to a trademark in which Complainant has rights, and
(ii) Respondent has no rights or legitimate interests in respect of the domain name, and
(iii) The domain name has been registered and is being used in bad faith.
In this case, the Panel finds that as a result of the Respondents’ default, pursuant to Paragraph 14(b) of the Rules, the Respondents have failed to rebut any of the Complainant’s factual assertions in support of its case. The Panel does not draw any inferences from the default other than those that have been established from the facts presented by Complainant and that have not been rebutted by the Respondents as a result of the default.
In particular, by defaulting and failing entirely to respond, the Respondents have not offered the Panel any evidence set forth in Paragraph 4(c) of the Policy from which the Panel might conclude that the Respondents have any rights or legitimate interests in the domain names.
The Respondents have, by defaulting and entirely failing to respond not provided the Panel with any exculpatory information or reasoning that might have led the Panel to question Complainant’s argument that the Respondents have acted in bad faith.
B. Domain Name Identical or Confusingly Similar to Trademark
Complainant has proven that it is the owner of rights in the trademarks PORSCHE, 911 and BOXSTER.
In comparing Complainant’s marks to the domain names, it is well-established that the generic top-level domain, in this case “.com,” must be excluded from consideration as being a generic or functional component of a domain name. (See Telstra Corporation Limited v. Nuclear Marshmallows, supra).
The domain names are not fully identical to the Complainant’s trademarks and, therefore, the Panel turns to consider the confusing similarity argument.
The Complainant here argued that the users of the domain names are made to believe the trademark owner or some entity associated with it operates an information platform for the car models indicated in the names, in particular, when the web sites to which the domain names redirect deal with these same car models. The Complainant argued that the words ‘my,’ ‘car,’ and ‘the’ added to the trademark could not exonerate the Respondents. Furthermore, the Complainant claimed that such composition adds to the confusion as to the similarity with its registered trademarks. The Complainant further asserted that the disclaimer placed on the sites does not prevent confusion because (i) it comes too late, and (ii) it actually confirms that Respondents were aware of the danger of confusion.
The Panel leans toward the conclusion that the domain names <my911cars.com> and <theboxster.com> lead to confusion and the belief that the public may get that the trademark owner owns or is affiliated with the domain name. The components such as ‘my,’ ‘car’ or ‘the’ do not and cannot reasonably have any other meaning and purpose than the one which is associated with the Complainant’s registered marks.
While the Panel notes this argument, it remains somewhat reserved toward the fact that by adding ‘my…cars’ “the user is made to believe the trademark owner or some entity associated with it operates an information platform for the car models indicated.” The Panel feels that this component might have been added in order to enhance the impression that the site is actually a “fan” site, showing the personal involvement of the site operator and the “fan community” site participants.
However, as it will be held throughout this decision, the Panel feels that the Respondents actually consistently and systematically attempted to render the UDRP analysis more difficult by incorporating certain elements established by earlier case law in favor of the Respondents. However, as the Panel at the same time feels that this might be perceived as a new kind of planned pattern of illicit domain name appropriation, with the goal of undermining the UDRP process by using its own case law, which can be termed reinforced- “smart”- cybersquatting of the second generation of cybersquatters educated in the UDRP law. Such a conclusion is only reinforced by the absence of the Respondents’ answers, and the Panel accepts that the pattern of their appropriation of a number of Porsche’s protected product names, beefed up by the appearance of, or pretense of being legitimate sites, is actually such a ploy.
The Panel wishes to make a separate remark in respect of the usage of the term ‘my…cars’ in the disputed domain name, added to the properly owned trademark of the Complainant. Although this surpasses the scope of the UDRP, it might, nevertheless, be taken into account that such is not exactly trademark usage of the highest standards, and that the trademark owner might consider such usage of the mark in a domain name with the added components detrimental to the consistency of their regular trademark usage.
The Complainant further holds that a disclaimer on the web sites does not prevent
confusing similarity because at this stage of the UDRP test only the domain
name itself matters (see WIPO Case No. D2001-0763,
Myer Stores Limited v. Mr. David John Singh, supra, <myeronnline.com>,
and WIPO Case No. D2000-0222, DaimlerChrysler
Corporation v. Brad Bargman, supra, <dodgeviper.com>).
The Complainant properly holds that, in any event, the disclaimer placed by
Respondents on the sites comes too late to prevent confusion (see WIPO
Case No. D2000-0615, E. & J. Gallo Winery v. Hanna Law Firm,
<bartlesandjaymes.com> and WIPO Case
No. D2001-0131, The Leonard Cheshire Foundation v. Paul Anthony Darke,
<leonard-cheshire.com>). The Panel agrees with the Complainant’s
contention that rather, the disclaimer confirms that Respondents were aware
of the danger of confusion (WIPO Case No.
D2000-0869, Estйe Lauder Inc. v. estelauder.com, estelauder.net and Jeff
Finally, in addition to the above discussion, the Respondents never advanced any reasoning or argument as to why confusion of the public is unlikely. All this leads the Panel to conclude that Complainant has sufficiently established confusing similarity under the Policy.
C: Rights or Legitimate Interests
The Complainant stated that the Respondents have no rights or legitimate interests in respect of the domain names. The Complainant goes on to prove it under each of the three points of Paragraph 4(c) of the UDRP.
(i) The Complainant stated that there is neither use nor demonstrable preparations to use the domain names in connection with a bona fide offering of goods or services.
The Complainant argued that Respondents are (a) offering information on the various Porsche cars and (b) using the domain names only as a pretext to promote gambling. The Complainant argued that the scheme that the Respondents use is to trick the user by using Complainant’s registered marks to visit their web sites and then the window linking to a gambling site would pop up automatically. The Complainant argued that the financial benefit to the Respondents is a payment that owners of web sites which hyperlink to high profit gambling sites get paid for any link brought to such site. The Panel accepts this argument in light of the evidence showing the construction of the sites and taking into account the nature of the links and pop-up menus appearing at the sites.
(ii) The Complainant further stated that the Respondents are not commonly known by the domain names. The Complainant offered no argumentation, but the Panel does concur with this assertion, in spite of the fact that the business names of the apparently fictitious Registrants do actually contain the same terms as the disputed sites, namely the Complainant’s protected trademarks 911 and BOXSTER, respectively. The Panels affirms that the use by the fictitious Registrant of the protected trademarks of another rightful owner in their false corporate entity names cannot be considered as Respondents being commonly known by the domain names.
In the Panel’s view, the Respondents have been using Complainant’s registered marks and have been relying on the fact that a user would associate the domain names with one of the Complainant’s marks by which it is commonly known to the public.
(iii) Finally, the Complainant asserts that the Respondents are not making noncommercial use of the domain names. Following Complainant’s discussion under (i) above, it is fair to conclude that its claims that the Respondents have been using the domain names for a very particular commercial use are correct. In addition, it seems that the purpose of using the domain names is to mislead Internet users so that they would be exposed to the gambling sites, advertisements and links.
The burden of proving rights to and legitimate interests in the domain names shifts to the Respondents who have to prove the existence of, without limitation, any of the three circumstances listed in Paragraph 4(c) of the Policy. The Complainant has put forward it arguments and contentions and, absent any reply from the Respondents, the Panel finds the Complainant’s contentions credible and, hence, concludes that the Respondents have no rights or legitimate interests in the domain names.
D. Registered and Used in Bad Faith
Having satisfied the previous two tests, Complainant’s final hurdle is to establish that the Respondents have registered and used the domain names in bad faith. A non-exhaustive list of circumstances evidencing the use of a domain name in bad faith is listed in Paragraph 4(b) of the Policy.
The Complainant invokes Paragraph 4(b)(iv) stating that the Respondents intentionally misled and trapped users who sought genuine information about the Complainant and its products. It further stated that the Respondents should have been aware of the Complainant’s trademarks, but it nevertheless used the domain names and the web sites without indicating that the Respondents are not the Complainant.
The Panel finds that the Respondents used the domain names to intentionally attempt to attract Internet users to their web sites for commercial gain by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the disputed web sites where none existed.
The Panel further finds that the Respondents actually violated Paragraph 4(b)(ii) by registering the domain names in order to prevent the owner of the trademarks from reflecting the marks in corresponding domain names by engaging in a pattern of such conduct.
The Complainant did not invoke the examples under 4(b)(i) and (iii), and the Panel concurs with it that none of the illustrative examples apply to this case.
In addition to the argument supporting the 4(b)(iv) case, the Panel finds additional evidence of bad faith in this case, (a) by providing false contact information, and (b) by failing to respond to Complainant after Complainant raised a legitimate dispute.
(a) It is highly likely that the companies registered in Antigua and Barbuda as the owners of the two domains (theboxster, Inc. and 911-cars, Inc.) are fictitious. As the Complainant stated, information given to WHOIS records is false – the search shows no record of the existence of the companies, postal addresses do not exist and the phone numbers indicated in the records are disconnected.
Providing false contact information violates the Policy. See Section 2 of the
Policy (“you hereby represent and warrant to us that (a) the statements
that you made in your Registration Agreement are complete and accurate”).
Further, previous decisions have found that providing false identification information
is evidence of bad faith. (See Carfax, Inc. d/b/a Carfax v. Auto Check USA,
WIPO Case No. D2001-0929, VEDA GmbH
v. Mr. Nicholas Silverstone, WIPO Case
(b) The Respondents have not offered any explanation for their activities,
despite Complainant’s efforts to reach them. Complainant has attempted
to reach Respondents via the email address, telephone number, and fax number
appearing on their web sites. If the Respondents had had any justification for
registering or using the disputed domain names, they could have provided it,
thereby avoiding the risk and expense of this proceeding or other legal action.
(See Verio Inc. v. Sunshinehh, WIPO
Case No. D2003-0255).
Respondents never answered these allegations nor attempted to deny them.
Finally, the Panel concludes that Respondents have registered and used the
domain names in bad faith pursuant to Paragraph 4(b) of the Policy.
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 names <my911cars.com>,
and <theboxster.com> be transferred to the Complainant.
Dated: June 15, 2004