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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Dr. Ing. h.c. F. Porsche AG v. ANC Online Avrasya Bilisim Tekn San ve Dis Tic A S

Case No. D2006-0912

 

1. The Parties

The Complainant is Dr. Ing. h.c. F. Porsche AG, Porscheplatz 1, Germany, represented by Lichtenstein, Kцrner & Partners, Germany.

The Respondent is ANC Online Avrasya Bilisim Tekn San ve Dis Tic A S, Istanbul, Turkey.

 

2. The Domain Name and Registrar

The disputed domain name <porscheci.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 18, 2006. On July 19, 2006, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the domain name at issue. On July 24. 2006, OnlineNic, Inc. d/b/a China-Channel.com 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 August 3, 2006. The Respondent’s customer, Mr. Ozkutuk, sent an email to the Center on August 11, 2006, in which he outlined his line of defense against the statements made in the Complaint. On August 18, 2006, the Center responded to this email by clarifying the procedures that needed to be followed in order to respond in line with the Rules and Supplemental Rules.

In accordance with the Rules, paragraph 5(a), the due date for Response was August 23, 2006. The Respondent did not submit a response that is in line with the Rules and the Supplemental Rules. Accordingly, the Center notified the Respondent’s default on August 25, 2006.

The Center appointed Nasser A. Khasawneh as the sole panelist in this matter on October 2, 2006. 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

It is incontestable that the Complainant is operating a world-famous business under a widely-known trademark. As noted in the Complaint, “for over 50 years Complainant has been a manufacturer of sports cars and enjoys a global reputation. “Porsche” is the prominent and distinctive part in Complainant’s trade name. Complainant also owns numerous trademarks consisting of or incorporating the name “Porsche”. The Panel is satisfied that the Complainant’s PORSCHE trademark is used and registered in various classes of goods and services in countries throughout the world, including the United States, United Kingdom, the European Union and various countries under International Trademark Registrations under the Madrid Protocol. The Complainant’s trademark rights in Turkey are beyond dispute and were not contested either by the Respondent or the Respondent’s customer.

The Complainant operates its main website at “www.porsche.com”.

The Respondent, an Internet service provider, owns and operates the disputed domain name on behalf of another party that works in the car business in Turkey. Mr. Yuksel Ozkutuk, in the email dated August 11, 2006, confirms that the Respondent registered this domain on his behalf and set up the necessary processes for the use of the domain name by Mr. Ozkutuk. The website of the disputed domain name includes content that is clearly intended to market the Repondent’s services in relation to the Complainant’s car business.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

- The disputed domain-name is confusingly similar to the Complainant’s trade name and trademark PORSCHE. The combination of “porsche”, the Complainant’s trade name, with the suffix “ci” (dealer) is confusingly similar because it suggests a close relationship between the owner of the trademark and the owner of the domain name. The domain name <porscheci.com> combines the Complainant’s trade name with the Turkish suffix “ci”. The suffix “ci” generally indicates a professional or a shop, like for instance in: satici = salesman (derived from sati = sale) / balikci = fisherman, fish, fish shop, (derived from balik = fish).” Therefore, the best possible translation of the terms “porscheci” is “Porsche Dealer,” or “the Porsche man.” Consequently, this fact, amongst others, implies to the public that the person or business that owns this disputed domain name is an authorized distributor of Porsche.

- The Respondent has no right or legitimate interest in respect of the disputed domain name. The Complainant supports this contention with various arguments, including: The Respondent is not and has never been an authorised dealer of the Complainant’s products and there is not and has never been a business relationship between the parties, the Respondent does not use the domain name in connection with a bona fide offering of goods or services and the Respondent is not commonly known by the domain name and is not making a non-commercial or fair use of the domain name; rather he is using it for commercial purposes.

- The Respondent has registered and uses the disputed domain name in bad faith. The Complainant presents various factors and arguments in support of this contention, including:

- Respondent as an Internet Service Provider has rented the domain name to an unauthorized dealer who must have been aware of the trademark rights in the name “Porsche”, thereby exploiting the commercial value embedded in this famous name.

- By using the domain name, Respondent intentionally attempts to attract, for commercial gain, Internet users to the website of its customer whose identity it protects by assuming the position of the registrant in the whois register.

- Even the fact that the domain name is used by a dealer of Porsche cars or a provider of services related to Porsche cars does not lead to the conclusion that the domain name was registered and is being used in good faith. Respondent would not pass the test that several Adminitrative Panels have adopted to determine whether a Respondent who actually offers products made by the trademark owner acts in good faith. The Complainant refers to the Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, in order to support his arguments in this regard and describes how the tests of bad faith established therein are met by the Respondent. The Respondent in this case uses the site of the disputed domain name to offer goods other than those of the trademarked goods, namely BMW cars and related services. “This even seems to be the focus of Mr. Цztьrk’s business, indicated by the word “Bavaria” which is the German home state of BMW.” The site also does not accurately disclose the registrant’s relationship with the trademark owner. There is neither a disclaimer nor any sign that sets the Respondent or its customer apart from the complainant.

- The Respondent cannot distance itself from the mala fides of its customer. If it chooses to act as a ‘front’, it has to bear responsibility for what goes on behind it (cf. Dr. Ing. h.c. F. Porsche AG v. Domains by Proxy, Inc and Sabatino Andreoni, WIPO Case No. D2003-0230).

B. Respondent

The Respondent did not reply to the Complainant’s contentions in line with the requirements of the Rules and the Supplemental Rules. However, as mentioned above, the Respondent’s customer sent an email to the Center on August 11, 2006, in which he outlined his line of defense against the statements made in the Complaint. While the email submitted by the Respondent’s customer did not meet the formal requirements of the Rules and the Supplemental Rules, the Panel did review the statements of the Respondent’s customer in this aforementioned email. While the response was indeed deficient in terms of the formal requirements of response submission, the Panel found it in line with the basic principles of equity and fairness to review the arguments of the Respondent’s customer, as he has presented himself as the actual user and beneficiary of the site of the disputed domain name and on whose behalf the Respondent had operated the site. The email was indeed received by the Panel along with all Complaint and related correspondence. Consequently, the Panel finds that, in line with the authority vested in the Panel by virtue of paragraph 10(d) of the Rules, the email response of the Respondent’s customer shall form part of the record in this case.

In the email of the Respondent’s customer, Mr. Ozkutuk, he stated the following:

- Mr. Ozkutuk is not trying to hide any facts or escape any responsibility. He had asked the Respondent to buy the disputed domain name and do the necessary in order to operate this business;

- He described the purposes of their business as follows: “We are a special car service located turkey since 1987. we are pro about Porsche and BMW cars, but there is no commercial relationship with Porsche or BMW. just we are buying part from porsche or FVD and give service for cars specially”

- He confirms what the terms “porscheci” means: “PORSCHECI mean is porsche user or porsche buyer or porsche fun.”

- He says the site explains that the logo and photos of Porsche are used as samples only and are the trademark of the Complainant.

- He offers to cooperate with the Complainant by removing the Porsche car pictures or logos, if that is necessary, but he adamantly refuses the prospect of transferring the disputed domain names to the Complainant.

 

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds that it is incontestable that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The disputed domain name reproduces, letter by letter, the registered and widely-known PORSCHE trademark of the Complainant. The word “porsche” is replicated in the disputed domain name. The word is simply attached to the suffix “ci” which, according to the statements of both the Complainant and Respondent’s customer, implies a strong association with any word to which it is attached. As the examples of the Complainant demonstrated, the addition of the suffix “ci” in Turkish signifies a professional, or dealer of a certain trade:

satici = salesman (derived from sati = sale)

balikci = fisherman, fish, fish shop, (derived from balik = fish)

fotografci = photographer, photo shop, (derived from fotograf = photo)

kitapci = book dealer, book shop, (derived from kitap = book)

yemisci = fruit dealer, fruit shop (derived from yemis = fruit)

All these above examples accurately reflect the use of the “ci” suffix in Turkish. In fact, the Respondent’s customer, in his email of August 11, 2006, confirmed this meaning by saying that “porscheci” meant Porsche “user” or “buyer”.

The addition of such functional letter to a registered and protected trademark cannot serve to make it more distinct or independent. On the contrary, the addition of such a word with such a definitional link to the word Porsche only increases the confusing similarity and near identity with registered trademark of the Complainant.

Consequently, the Panel finds for the Complainant on the first element of the Policy.

B. Rights or Legitimate Interests

In determining whether or not the Respondent has legitimate rights or interests in the disputed domain name, consideration may be given to the fact that the Respondent and the customer making use of the disputed domain names are two different parties. As confirmed in the statements of Mr. Ozkutuk, the Respondent had registered the disputed domain name on behalf of Mr. Ozkutuk, and the Respondent operated the site on Mr. Ozkutuk’s instructions and in line with his business needs.

It is the view of the Panel that the three UDRP tests can be determined in light of the use of the disputed domain names by Mr. Ozkutuk, the undisputed beneficiary of the registration of the disputed domain names. This is particularly the case in light of the lack of response from the Respondent to the Complaint. In fact, Mr. Ozkutuk responded to the Complaint in absolute terms confirming that the disputed domain name is his, and is operated by his business, and that the role of the Respondent is merely one of agent and facilitator. Therefore, in determining whether or not to allow the disputed domain name to remain with the Respondent or be transferred to the Complainant within the parameters of the UDRP Policy, this Panel feels that it is Mr. Ozkutuk’s use of the site that must primarily examined and investigated. The Respondent has no choice, in these circumstances, but to assume responsibility for its actions and accept any decision regarding the domain name that stems from the use of intended beneficiary thereof, i.e. Mr. Ozkutuk.

It is the Panel’s view that neither the Respondent nor Mr. Ozkutuk can claim a legitimate right or interest in the disputed domain name. The key reason behind this conclusion is the fact that the use of the disputed domain name was at no point licensed or approved by the Complainant. The site of the disputed domain name openly refers to Porsche and what the business of Ozkutuk’s can do in terms of servicing Porsche cars. Mr. Ozkutuk clearly and unequivocally states, in his email of August 11, that his business buys Porsche parts and services Porsche cars. He also confirms that there is no commercial relationship between him and the Complainant. In such a case, the Respondent or Mr. Ozkutuk should have sought the authorization or license of the Complainant to use the latter’s trademark in a registered domain name.

In the view of this Panel, right or legitimate interests in such a case cannot exist unless the Respondent proves that it had the authorization or approval of the trademark rights holder to use and replicate the Complainant’s mark in a registered domain name that is used so openly to associate with the Complainant’s business.

Consequently, the Panel finds for the Complainant on the second element of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out a number of circumstances, each of which shall provide evidence of registration and use in bad faith. The fourth such circumstance is defined as follows:

“(iv) by using the domain name, you 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 location.”

The Complainant invokes this element in its Complaint. It is this Paragraph 4(b)(iv) of the Policy which is of paramount importance in considering the third element in this case. The Panel considered whether or not the Respondent and/or Mr. Ozkutuk were attempting intentionally, through the use of the disputed domain name, to attract internet users to its site by creating a likelihood of confusion with the Porsche trademark in such a way as to confuse these visitors into thinking that the site was officially linked with Complainant.

As mentioned above, the suffix “ci” linguistically creates a professional or definitional link with the word to which it is attached. Therefore, the average customer in Turkey would understand that the “porscheci” is the man or business “of” Porsche cars. The customer would in all likelihood assume that the person who owns this domain name is officially linked with the Porsche brand. It is highly likely that the average Turkish consumer would conclude that the person or business operating the “porscheci” domain is the authorized dealer, or contractor of some sorts, of the world-famous Porsche cars. Applying the words of Paragraph 4(b)(iv) of the Policy, this Panel considers that consumers are more than likely to assume that there is some sort of a “sponsorship, affiliation, or endorsement” that links the disputed domain name with the business of the Complainant.

Furthermore, Mr. Ozkutuk, in his email of August 11, 2006, admitted expressly that he provides service to Porsche cars, saying that his business is “pro” about Porsche cars. In other words, the Respondent is expressly linking himself to the business and trademark of the Complainant. Consequently, that Mr. Ozkutuk was “intentionally” attracting consumers to his site by creating a clear link with the Porsche business and, in this regard, it is inconceivable to this Panel that Mr. Ozkutuk would not have known consumers were likely to be confused as to the source, sponsorship or other official link with the Complainant, given the full use of the trademark Porsche in the disputed domain name. Add to that the fact that Mr. Ozkutuk did not seek the authorization or license from the Complainant to register and use the disputed domain name, and one can be convinced, on a balance of probabilities, that the circumstance set out in Paragraph 4(b)(iv) of the Policy is firmly established in this case.

The Panel considered the issue of the disclaimer or lack thereof. The Complainant claimed that the Respondent and Mr. Ozkutuk did not include any sort of disclaimer on the site explaining the relationship with the Complainant and confirming that there is no official link, or clarifying the trademark status of the Complainant’s trademark. Mr. Ozkutuk, in his email, on the other hand, states that the relationship was clearly explained through the inclusion of the following language:

“2005 Her Hakkэ Saklэdэr Bavaria. Sayfada kullanэlan her tьrlь resimPorsche Markasэnэn Tescili altэndadэr. Araз Resimleri Temsilidir.”

This statement can literally be translated as follows: “2005 Rights are reserved for Bavaria. All the photos used in this page are covered under the Porsche trademark. Vehicle photos are figurative.” There is nothing in this statement that clarifies the relationship between the Mr. Ozkutuk and the Complainant. While the fact that Mr. Ozkutuk expressly confirms the Complainant’s Porsche trademark can be seen in a favorable light, it is the Panel’s view that the phrasing of this sentence would only lead to greater confusion on the part of consumers. Given that the site name includes the Porsche trademark, the additional statement mentioning the Porsche trademark, without referring to the relationship between the parties, adds to the likelihood that consumers would think that there is a direct link between the Complainant and Mr. Ozkutuk.

In reaching its conclusion, the Panel was guided by various previous WIPO UDRP Decisions, including Houghton Mifflin Co. v. Weatherman, Inc., WIPO Case No. D2001-0211, in which the Respondent used “curiousgeorge.net” to offer the Complainant’s “Curious George” merchandise for sale. The panel in that case found bad faith, inter alia, because the “Respondent prominently featured the ‘Curious George’ mark, with its distinctive lettering style and a drawing of Curious George himself, as the title of its site, but did not at any point identify itself as a separate entity from the Complainant.” Consequently, the Panel found that “Consumers were therefore likely to be confused into thinking that the merchandise offered therein was being offered by Complainant.”

In considering the issue of bad faith, the Panel in this case also took note of the Complainant’s assertion that, “on May 3, 2006, soon after the domain name was discovered by the Complainant, a cease and desist was sent by E-mail to the respondent wherein Complainant demanded that the contested domain name be transferred.” Mr. Ozkutuk did not deny this claim in his email of August 11, 2006. Actually, he says, in the said email, that the Complainant must buy the disputed domain name from him if it wants the domain name back.

In light of all the evidence before it, the Panel concludes that the third element under the Policy has been also satisfied by the Complainant in this case.

 

7. 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 <porscheci.com> be transferred to the Complainant.

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Nasser A. Khasawneh
Sole Panelist

Dated: October 16, 2006