Complainant is Dr. Ing. h.c. F. Porsche AG of Stuttgart, Germany, represented by Dr. Rolf Diekman, Lichtenstein, Körner & Partners, Germany.
Respondent is no of Buckingham, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Names and Registrar
The disputed domain names <part4porsche.com> and <911-forever.com> are registered with Intercosmos Media Group d/b/a directNIC.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 6, 2010. On April 7, 2010, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the disputed domain names. On April 8, 2010, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 April 13, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 3, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on May 4, 2010.
The Center appointed Nicolas Ulmer as the sole panelist in this matter on May 11, 2010. 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, Dr. Ing. h.c. F. Porsche AG of Stuttgart, Germany, is an internationally known car manufacturer operating for over half a century. It is commonly referred to, and labels its automobiles, “Porsche”. “911” is the denomination for a series of well-known Porsche model automobiles (e.g. 911 Carrera, 911 Turbo, 911 GT3). Complainant cites 5 trademarks for its PORSCHE mark (German Trademark No. 643195, registered on August 26, 1953 (cars and parts thereof), International Registration No. 179928, based on the foregoing registered on October 8, 1954, United States Federal Trademark Registration No. 0618933, registered on January 10, 1956 (cars and parts thereof), European Trademark Registration No. 000073098, filed on April 1, 1996 and registered on December 12, 2000, and Taiwanese Trademark Registration No. 219603, filed on March 2, 1983 and registered on October 16, 1983) as well as 4 for its well-known and long used 911 mark (United States Federal Trademark No. 2414167, filed on February 14, 2000 and registered on December 19, 2000, German Trademark No. 39601333.3, registered on June 13, 1996, European Community Trademark No. 21089, filed on April 1, 1996, and registered. June 8, 1999, in Class 12, and European Community Trademark No. 1206085, filed on June 14, 1999, and registered on April 4, 2003, in Classes 3, 8, 9, 14, 16, 18, 21, 24, 25, 28, 33, 34, 35, 36, 37, 39, 42). Complainant's principal website is “www.porsche.com” and it distributes its cars and parts throughout the world using a network of official dealers.
Respondent is identified in the Complaint as “no”, though it apparently authored communications under the name “Alan”. Respondent appears to be a resident of Buckingham, England, and the whois information provides an Administrative Contact by the name of Hsin-Heng Chen at the same address as Respondent. Respondent, in addition to the two domain names here in dispute, is in control of <quality-bmw.com> and <lovelymini.com> and previously controlled <porsche-dynamic.com> which was voluntarily transmitted to Complainant before this proceeding.
Further pertinent facts are adumbrated in paragraph 5A, below.
5. Parties' Contentions
A. Complainant
Complainant first became aware of Respondent in July 2007 as Respondent was offering aftermarket Porsche parts on ebay under the name “autopartsdirect2006”. By following up on this information, Complainant became aware of a website “www.porsche-dynamic.com”, run by Respondent. The site did not contain any information, short of a “coming soon” announcement but was later replaced with a “parking website with paid links”. Complainant, through whois, discovered that Respondent had also registered <formula-design.com>, which contained the title “Formula-Design Motorsports – Porsche Aerodynamic And Accessories”, a copyright notice dated 2005 and a “coming soon” announcement. Complainant also discovered that Respondent controlled both <quality-bmw.com> and <lovelymini.com> which redirected the user to <bimmer-direct.com>, another parking site with paid links, though registered to Admin – [email protected]. <Part4porsche.com>, one of the disputed domain names, redirects the user to a website identical in appearance and content as “www.formula-design.com”. <911-forever.com> redirects the user to a page entitled New Page 1 which contains the “Formula Design motorsport” logo and offers as a contact address “[email protected]”. The automotive titled subchapters do not contain any information and despite the product list and information on payment method, there is seemingly no way to order the products displayed.
Complainant, on October 11, 2007, sent a cease and desist letter to Respondent, and after a few communications, Respondent, “Alan”, willingly transferred <porsche-dynamic.com> to Complainant but requested that he be able to retain <part4porsche.com> due to his use of the domain name in his email address. But “Alan” also wrote that “I will remove the domain name “Porsche” and this will not make any confusing similarity between my aftermarket parts with your client [sic] of “Porsche”. Complainant granted him a brief period of time in which to change his email address and notify his contacts of such change. Complainant continued to monitor <part4porsche.com>, but instead of allowing the domain name to expire, Respondent renewed it, leading Complainant to commence this proceeding.
B. Respondent
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant must prove the following:
(i) Respondent's domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) Respondent's domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name <part4porsche.com> includes the entirety of the highly-recognizable trademark PORSCHE, the addition of the “part4” (i.e. part for) does nothing to reduce the confusing similarity with Complainant's mark but rather augments it; indicating a domain name to offer car parts. It is obviously confusingly similar with Complainant's name and marks. The second disputed domain name <911-forever.com> also contains Complainant's trademark 911, which refers to a series of well-known automobiles manufactured by Complainant. The subsequent addition of the expressive or descriptive term “forever” does not here dispel the similarity with what Complainant has demonstrated to be a well-known mark, and/or misleadingly implies a fan website or an advertisement, and not an independent commercial site. Accordingly, this disputed domain name is also confusingly similar to Complainant's trademark.
B. Rights or Legitimate Interests
Complainant asserts convincingly that Respondent is not a licensee or a person with whom Complainant has had or has had a business relationship. All evidence in the file, notably the cease and desist letters and Respondent's answers thereto, confirm this assertion. Respondent is not commonly known by the marks contained in the disputed domain names. Respondent, having not answered the Complaint, submits no evidence to the contrary, accordingly this element of the Policy is also met by Complainant.
C. Registered and Used in Bad Faith
It is clear that Respondent, in registering the disputed domain names in 2007 acted in bad faith with the apparent intent to use the well-known marks of Complainant for its commercial purposes or gain.
Some issues do arise concerning Respondent's “use” of the disputed domain names, inasmuch as they do not appear to have been fully implemented in their own right, but rather to direct the user to other sites related to automotive parts, but not clearly fully operational. But it has been well established since the Telstra Corporation Limited v. Nuclear Marshmallows,
WIPO Case No. D2000-0003 that even the passive holding of an offending domain name may constitute bad faith use, and all evidence here points to such bad faith use. Respondent “Alan's” fallback position as expressed in its replies to the cease and desist letter is that it be permitted to continue to use <part4porsche.com> as its email address. Complainant correctly opposes this and contrasts “Alan's” request with the accepted precedent of renting “vanity” e-mail addresses as a legitimate business, the elements of which are not here present, see, e.g. Raccords et Plastiques Nicoll v. Tucows.com Co.,
WIPO Case No. D2008-1322. Finally, Respondent's conduct in using pseudonyms to reply evasively to cease and desist letters and demonstrated pattern of registering domain names with well-known marks of automobile manufacturers is further indicia of bad faith conduct.
Thus, the third element of the Policy is also here proven.
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 names, <part4porsche.com> and <911-forever.com> be transferred to Complainant.
Nicolas Ulmer Sole Panelist
Dated: May 20, 2010
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