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WIPO Arbitration and
Dr. Ing. h.c. F. Porsche AG v. Ron Anderson
Case No. D2004-0312
1. The Parties
Complainant is Dr. Ing. h.c. F. Porsche AG, Stuttgart, Germany, represented by Lichtenstein, Kцrner & Partners, of Germany.
Respondent is Ron Anderson, of Morrow, Georgia, United States of America.
2. The Domain Name and Registrar
The disputed domain name <porschesales.com> (the “Domain Name”)
is registered with Domainsite.com, Denver, Colorado, United States of America
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 28, 2004, electronically and on May 4, 2004, in hard copy. On April 28, 2004, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 13, 2004, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the administrative, billing, and technical contact details. 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 Respondent of the Complaint, and the proceedings commenced on May 14, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was June 3, 2004. A first Response was filed with the Center on May 7, 2004; on June 1, 2004, Respondent filed further submissions.
The Center sent Respondent an Acknowledgment Receipt of Response on June 7, 2004, and appointed Anna Carabelli as the sole panelist in this matter on June 18, 2004, indicating that the due date for decision is July 2, 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
Complainant has been manufacturing well-known sport cars for over 50 years, under the trademark “PORSCHE”.
Complainant has provided evidence of a number of trademark registrations for the word PORSCHE in many countries, including the United States of America, covering a wide range of goods and services (Attachments 2-19 to the Complaint).
Complainant operates its web site at “www.porsche.com”.
The Domain Name is not redirecting to a web site.
5. Parties’ Contentions
Complainant contends that:
- Complainant’s trademark and trade name PORSCHE are well known throughout the world and enjoy an excellent reputation;
- the Domain Name is confusingly similar to Complainant’s trademark and trade name “PORSCHE”. The combination of the words “PORSCHE” and “sales” creates confusion as to the ownership of a web site and mislead Internet users seeking for genuine information about Complainant and its products;
- since registration, the Domain Name has not been redirecting to a web site and there is no evidence of any preparation to use the Domain Name with a bona fide offering of goods or services;
- Respondent is not commonly known by the Domain Name and is not an authorized dealer of Complainant’s products;
- Respondent has no right or legitimate interest in the Domain Name;
- Respondent registered and uses the Domain Name in bad faith considering that:
(i) Respondent could not have been unware of Complainant’s trademark;
(ii) Respondent operates various web sites (“www.ronanderson.com”, “www.helicoptersales.com”, “www.robinsonhelicoptersales.com” ) where he offers his merchandise to the public, including domain names;
(iii) Respondent uses fictitious names and legal entities. The Domain Name was originally registered to the company Apex Helicopter based in Cook Islands, which turned out to be not existing, and later transferred to Respondent who is now the registrant of the Domain Name as shown in Annex 1;
- because the Domain Name does not redirect to any web site, this is a case of bad faith use by inaction.
Based on the above, Complainant requests the transfer of the Domain Name.
Respondent contends that:
- Respondent is not the owner of the Domain Name which is registered by Apex Helicopter Limited, a company organized and existing under the laws of New Zealand;
- Respondent trades in aircraft, real estate and cars and owns several web sites and domain names. Some of them have been offered for sale by Respondent but this never happened for the Domain Name;
- Respondent has several legitimate addresses and telephone numbers and none of them are false;
- the owner of the Domain Name (Apex Helicopter) planned to develop a web site for brokering and selling pre-owned Porsche cars and made preparations to use the Domain Name. This plan was postponed in 2003, simply because of Complainant’s threat to bring a law suit;
- the Domain Name is not confusingly similar to Complainant’s trademark and is not misleading Internet users. The word “sales” clearly identifies the purpose of the planned web site, i.e., sales of pre-owned Porsche cars;
- registration of the Domain Name by Respondent is perfectly legitimate as shown by the fact that, according to a search made by Respondent, there are many domain names on the Internet made by the combination of auto manufacturers’ names with the word “sales” pointing to independent auto sales organizations.
Based on the above, Respondent requests the Complaint be denied.
6. Discussion and Findings
Paragraph 15 (a) of the Rules instructs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Under paragraph 4 (a) of the Policy, Complainant must prove each of the following:
(i) the domain name in issue is identical or confusingly similar to complainant’s trademark or service mark; 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.
A. Preliminary issue
Respondent contests that he is merely the “administrator” of the Domain Name, the “registered owner” being Apex Helicopter Ltd., but this is a mere allegation which is not substantiated by any evidence or facts and is contradicted by the Registrar (which in its verification response dated May 13 confirmed that “the current registrant of the Domain name is Ron Anderson”) and by the printout of the Whois database on April 21, 2004, attached to the Complaint as Annex 1.
Respondent’s contention on this point cannot be taken seriously. Moreover, Respondent has submitted a Response with his rebuttal, thereby recognizing to be the Respondent in this proceeding (under paragraph 1 of the Rules the respondent is the holder of the domain name registration against which a complaint is initiated).
B. Identical or Confusingly Similar
The Domain Name is <porschesales.com>. PORSCHE is a registered trademark of Complainant. The Domain Name therefore consists of Complainant’s trademark to which the general term “sales” is added. The Panelist agrees with the principle established by numerous prior decisions, that when a domain name contains in full a complainant’s registered mark, that is sufficient to establish confusing similarity.
The Panel finds that PORSCHE is a well-known mark firmly associated with Complainant
in connection with the manufacture and sale of sport cars. (Doctor.
Ing. h. c. F.Porsche AG v. Stonybrook Investments Limited, WIPO
Case No. D2001-1095)
By incorporating Complainant’s mark with the generic term “sales”,
the Domain Name will create an association with the activity carried out by
Complainant and identified by the PORSCHE trademark, thus increasing the likelihood
of confusion. As stated in the case Koninklijke Philips Electronics N.V.
v. NicNax, WIPO Case No. D2001-1245,
the combination of the complainant’s trademark “with the term “sales”
is under trademark law principles likely to be understood by consumer as being
a variation of the trademark (……) and when used as a domain name
it is likely to be understood as providing a link to a web site belonging to
a sales department of the Complainant or to a web site of an authorised sales
agent of the Complainant” (on domain names consisting of a trademark
followed by a generic addition with no distinctive character, see also Heineken
Brouwerijen B.V. v. Mark Lott, WIPO Case
No. D2000-1487, Dr. Ing. H.c. F. Porsche AG v. Sabatino Andreoni, WIPO
Case No. D2003-0224).
Therefore, Complainant succeeded in demonstrating Paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
The Panelist finds that Complainant succeeded in establishing also factor (ii) of Paragraph 4(a) of the Policy based on the following circumstances:
(i) at the time Respondent registered the Domain Name, he could not be unaware of Complainant’s trademark PORSCHE, particularly as Respondent is a dealer, amongst other products, of used Porsche cars;
(ii) Respondent does not have any authorization or license to use the Complainant’s trademarks or to incorporate them in the Domain Name nor he is an authorized dealer of Complainant’s products or has ever had any business relationship with Complainant;
(iii) Respondent is not commonly known by the Domain Name;
(iv) Respondent has made no use of the Domain Name since there is no current
web site available at the Domain Name.
Respondent submissions on the lack of rights and legitimate interest are as follows:
(a) Respondent did have plans to develop a web site under the Domain Name for purchasing, brokering and selling pre-owned Porsche cars but such plans were postponed due to Complainant’s legal threats;
(b) Respondent has legitimate interests in the Domain Name, being a dealer of used Porsche cars.
Respondent has not substantiated the submission as to a) with any fact or evidence.
In addition in the Panel’s opinion, the fact that Respondent trades in automobiles (and specifically in pre-owned Porsche cars) would in any case not give right to Respondent to use the PORSCHE mark as a trade name to carry on its business in order to make commercial gain and to attract consumers. Respondent could not be prevented from using Porsche in a non-trademark sense on its web site but this is not the way he was planning to use the Domain Name. Respondent’s projected web site would in fact be accessible through the Domain Name, which would misleadingly appear to be a domain name of the Complainant. Consumers would realize that this is not the case only once they had actually accessed the site and could see the disclaimer added by Respondent after it had received Complainant’s objections. At this point, however, they had already been diverted and misled.
The Panel concludes that Respondent has no rights or legitimate interests in the Domain Name.
D. Registered and Used in Bad Faith
Under the Policy, the Complainant is also required to prove the third element provided for in paragraph 4(a)(iii), namely that the Domain Name “has been registered and is being used in bad faith”.
The Complainant’s trademark PORSCHE is undoubtedly famous, and it is
inconceivable that Respondent registered the Domain Name unaware of the Complainant’s
rights in its PORSCHE mark and with an intent to use it in good faith. (see
Veuve Cliquot Ponsardin v. The Polygenix Group Co., WIPO
Case No. D2000-0163; Parfums Christian Dior v. Javier Garcia, WIPO
Case No. D2000-0226).
The Panel agrees that this is a case of passing holding. Since the “Telstra
Case”, it is an established principle that the concept of a domain name
“being used in bad faith” is not limited to positive action; inaction
is within the concept, as supported by the actual provision of paragraph 4(b)
of the Policy. (see Teltra Corporation Ltd v. Nuclear Marshmallows, WIPO
Case No. D2000 – 0003, Guerlain S.A. v. Peikang, WIPO
Case No. D2000-0055).
Taking into account the conclusions under paragraphs b (the Domain Name is confusingly similar to the Complainant’s trademark PORSCHE) and c (Respondent lacks rights and legitimate interests in the Domain Name) the Respondent could not possibly make any plausible actual or contemplated active use of the Domain Name other than illegitimate, under fair competition and trademark law principles.
The Panel finds that Respondent registered and has
been using the Domain Name in bad faith.
For all the foregoing reasons, the Panel orders, in accordance with Paragraphs
4(i) of the Policy and 15 of the Rules, that the Domain Name <porschesales.com>
be transferred to Complainant.
Dated: July 2, 2004