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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Dr. Ing. h.c. F. Porsche AG v. Limex, LLC

Case No. D2003-0649

 

1. The Parties

The Complainant is Dr. Ing. h.c. F. Porsche AG, of Stuttgart, Germany, represented by Liechtenstein, Körner & Partners, Germany.

The Respondent is Limex, LLC, Alan Martin, of Suwanee, Georgia, United States of America, represented by ESQwire.com, Law Firm, United States of America.

 

2. The Domain Names and Registrar

The disputed domain names <porschelease.com>, <porscheloan.com> and <porscheloans.com> are registered with eNom.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 18, 2003. On August 18, 2003, the Center transmitted by email to eNom a request for registrar verification in connection with the domain names at issue. After reminder emails from the Center sent on August 21, 28 and 29 on August 29, 2003, eNom 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 September 2, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response September 30, 2003. The Response was filed with the Center September 30, 2003.

The Center appointed David Perkins, Bernhard Meyer-Hauser and David E. Sorkin as Panelists in this matter on November 5, 2003. The Panel finds that it was properly constituted. Each member of 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

4.1 The Complainant

4.1.1 The Complainant is the well-known manufacturer of sports cars, which are marketed and sold under the "PORSCHE" trademark. That trademark enjoys a reputation for high quality, performance and prestige motor vehicles. The Company has been manufacturing sports cars under the "PORSCHE" brand for over 50 years.

4.1.2 "PORSCHE" cars and financial services relating to those cars are provided worldwide by the Complainant through a network of authorized dealers and also directly by the Complainant. The Complainant has for many years provided financial services to customers for its motor vehicles, in particular through leasing contracts and loans.

The PORSCHE Registered Trademarks

4.1.3 The Complaint provides particulars of, inter alia, the following "PORSCHE" registered trademarks.

Country

Reg. No.

Mark

Class

Goods/Services

Date Registered

USA

618,933

PORSCHE

12

Automobiles and parts thereof

January 10, 1956

USA

2,638,773

PORSCHE Financial Services

36

Financing of vehicles and automobile dealerships

May 11, 2001 filed

October 22, 2002 registered

USA

1,431,901

PORSCHE

16

Printed Material, magazines etc

March 10, 1987

Canada

117,101

PORSCHE & device

12

Automobiles and parts thereof

December 24, 1958 filed

March 4, 1960 registered

Canada

414,155

PORSCHE & device

36

Motor car related services, including rent or leasing of motor vehicles

December 5, 1990 filed

November 5, 1993 registered

Canada

419,099

PORSCHE

36

Motor car related services, including rent or leasing of motor vehicles

December 5, 1990 filed

November 5, 1993 registered

Germany

643,195

PORSCHE

10

Cars and parts thereof

August 26, 1953

International Registration

179,928

PORSCHE

7, 8 & 12

Automobiles and parts thereof

October 8, 1954

Germany

3,953,382.7

PORSCHE

36 & 42

Banking, in particular consultancy relating to financial and monetary affairs; financing services, in particular for lease-purchase financing outlets, credit bureaux insurance, in particular car insurance

February 29, 1996

International Registration

657,048

PORSCH

36, 39 & 42

Banking, in particular consultancy relating to financial and monetary affairs; financing services, in particular for lease-purchase financing outlets, credit bureaux insurance, in particular car insurance

January 26, 1996

Community Trademark

73,098

PORSCHE

3, 8, 9, 12, 14, 16, 18, 21, 24, 25, 28, 34 – 37, 39 and 42

Vehicles and parts therefor (12); printed matter (16); and financing services, in particular for lease-purchase financing contracts etc (36)

April 1, 1996

The Complainant's PORSCHE Website

4.1.4 The Complainant operates its principal website at "www.porsche.com" which opens the gate to national websites, located at various ccTLDs: or Third Level Domains and designed to meet the needs of Internet users from specific countries or regions. For example, the US specific website is at "www3.us.porsche.com/english/usa/home.htm" and financial services are offered to customers in the United States at " www3.us.porsche.com/english/usa/financial.default.htm".

4.2 The Respondent

4.2.1 The Cityloans.com business

The Manager of the Respondent, Limex LLC, is Alan Martin. As explained in his affidavit served with the Response, the Respondent is engaged in the business of online promotion and the sale of financial services. Mr. Martin describes his primary business as Cityloans.com, an online home and mortgage business. That business was launched some 3 years ago and is described as having annual sales in excess of US $1 million.

4.2.2 Mr. Martin says that he has registered and actively uses over 800 generic domain names for independent websites in the Cityloans network. He cites as examples, <atlantaloans.com>, <bostonloans.com> and <dallasloans.com> because the Cityloans network offers loans to people in those cities.

The NewCarLoans.com and UsedCarLoans.com Project

4.2.3. Mr. Martin explains that he has planned a business to promote online automobile financing under the umbrella brands, <newcarloans.com> and <usedcarloans.com>, which are domain names Mr. Martin says that he registered in 1996. In connection with this potential business, Mr. Martin says that he has registered over 100 domain names incorporating automobile brands and financial terms, such as "loan" and "lease". These are listed in an annex to his affidavit. They include totally generic domain names – for example, <newcarloans.com> and <usedcarloans.com> – as well as domain names incorporating automobile brands – for example, <audiloans.com>; <bmwloans.com>, <ferrariloans.com> and, of course, the PORSCHE domain names in issue.

4.2.4. Mr. Martin says that he has spent over US $30,000.00 fighting the Complainant in Court in the United States. This is referred to further below. The relevance of this is that the outcome of this litigation will have an impact upon the Respondent's ability to retain the other auto-related domain names, examples of which are given in the preceding paragraph. Mr. Martin explains that it is a combination of that uncertainty and unfavorable market conditions which have together delayed launch of the planned <newcarloans.com> and <usedcarloans.com> businesses.

4.2.5 In the meantime, he has directed the PORSCHE domain names in issue to the Auto Section of "www.yahoo.com" because, he says, it is one of the most useful and popular sites on the Internet. Mr. Martin says that he received no revenue in connection with the redirection of those domain names to Yahoo.

The Doughmains.com Business

4.2.6. Mr. Martin explains that he also operates a domain name registration service called <doughmains.com>. He says that this name was secured because "dough" related to finance and most of the domain names relate to finance.

4.3 The US PORSCHE Trademark Litigation

4.3.1. Exhibited to the Complaint is a Decision of the US Court of Appeals for the Fourth Circuit dated August 23, 2002. The Plaintiffs in that action were the Complainant in this administrative proceeding and Porsche Cars North America, Incorporated, its US subsidiary. This was an in rem action against 128 domain names, including the 3 domain names in issue, all incorporating the PORSCHE name and mark, the relief sought being transfer of the right to use those domain names.

4.3.2. The 3 domain names in this administrative action were termed "the Georgia domain names" and the action asserting dilution of the "PORSCHE" trademark was brought against Mr. Martin [the Respondent here]. The original action was based on 28 USCAS.1655 but that action was dismissed by the District Court on the grounds that the Statute did not provide the in rem relief sought by the Porsche Plaintiffs.

4.3.3. During the Plaintiffs pending appeal from that dismissal, the Anticybersquatting Consumer Protection Act (ACPA) was enacted. The ACPA specifically enables in rem actions against domain names in certain circumstances if personal jurisdiction over the registrant of the domain name is unavailable; 15 USCA section 1125(d)(i). That claim was also dismissed, on the grounds that in personam jurisdiction was available against Mr. Martin.

4.3.4. The Court of Appeals for the Fourth Circuit appears to have held that, although the ACPA gives a trademark owner a cause of action for trademark dilution, the relief available does not include a right to have the offending domain names transferred. In the circumstances of the claim by the Porsche Plaintiffs only the more usual remedies of an injunction, damages and costs were available. The ACPA did not give the Porsche Plaintiffs a "lien upon, or claim to" the Georgia domain names through a trademark dilution claim under 15 USCA section 1125(c) and 28 USCA section 1655.

4.3.5. The greater part of the judgment of the Court of Appeals concerned a number of other PORSCHE domain names registered by a British citizen, and those names were termed "the British domain names".

4.3.6 Because transfer of the Georgia domain names was held not to be available under the ACPA in the circumstances of the claim against Mr. Martin, the Complainant has brought this administrative action under the Policy.

 

5. Parties’ Contentions

5.A. Complainant

5.A.1 Identical or Confusingly Similar

The three domain names in issue were registered on April 16, 1998. The "PORSCHE" mark and name is well known all over the world. All but one of the "PORSCHE" registrations listed in the Complaint were either filed or registered before that date. The "PORSCHE" trademark is the dominant and distinctive part of the domain names in issue, which are in the light of the foregoing submitted to be confusingly similar to that trademark.

5.A.2 Rights or Legitimate Interests

The Complaint states that the Respondent is not and has never been authorized to use the "PORSCHE" name and mark, whether as an authorized PORSCHE dealer or in connection with a business relationship between the parties. Nor can the Respondent bring itself within any of the circumstances set out in paragraph 4(c) of the Policy – see, paragraph 6(B) below – so as to demonstrate rights or legitimate interests to the domain names in issue.

5.A.3 Registered and Used in Bad Faith

5.A.3.1 First, the Complainant states that at the time the three domain names in issue were registered [April 1998] the Respondent could not have been unaware of the Complainant's rights in the "PORSCHE" name and mark and of its reputation in that name and mark.

5.A.3.2 Second, the Complainant asserts that all the circumstances indicate that the Respondent registered the domain names, along with those incorporating the trademarks of other well known automobile manufacturers [see, paragraph 4.2.3 above], with a view to generating financial return by selling them to the Complainant, or to a competitor of the Complainant, for valuable consideration in excess of the out of pocket costs directly related to those domain names.

5A.3.3 Third, the Complainant asserts that the Respondent registered the domain names in issue in order to prevent the Complainant – as owner of the PORSCHE trademarks and service marks – from reflecting its trademarks in a corresponding domain name. The Complainant points to a pattern of such conduct by the Respondent in registering domain names incorporating the trademarks of other well known automobile manufacturers: see, again paragraph 4.2.3. above.

5.A.3.4 Finally, the Complainant's case is that the Respondent registered and uses the domain names in issue intentionally to mislead and trap users who seek genuine information about the Complainant, PORSCHE, and its products.

5.A.3.5 The underlying circumstances upon which the Complaint relies are as follows. No information as to the identity of the registrant of the 3 domain names in issue, Limex LLC, could be discovered. The Complainant was, however, able to trace the Respondent, Alan Martin, to Cityloans.com. The business of cityloans.com is addressed in Mr. Martin's affidavit [see, paragraph 4.2.1 above]. The Complainant then lists 30 domain names registered by Mr. Martin, all of which use the suffixes "loan", "loans" or "lease" with the name and mark of an automobile manufacturer. Such trade names include AUDI: BMW: CHRYSLER: FERRARI: FORD: GM: JAGUAR: JEEP: MERCEDES: MITSUBISHI: TOYOTA and VOLKSWAGEN / VW.

5.A.3.6 Mr. Martin's affidavit lists additional "loans / lease" automobile domain names incorporating the name and mark of well-known automobile manufacturers as the prefix: see, paragraph 4.2.3 above. These include HUMMER: LANDROVER: LEXUS: NISSAN: ROLLS ROYCE: ACURA: BUICK: CADILLAC: DODGE: FIAT: HONDA: IZUZU: MAZDA: PEUGEOT: PONTIAC: SAAB etc.

5.A.3.7 The Complaint states that these domain names resolve to one of two websites, They are either the Respondent's standard advertising page or Capital One Auto Finance, a service offered by Mr. Martin's domain name registration service, <doughmains.com>. The three domain names in issue redirect to the Yahoo!Autos website, where automobile financing, advertising, sponsored links and links to car related pages at Yahoo! are available. Pages of these websites are exhibited to the Complaint. This is confirmed in Mr. Martin's affidavit: see, paragraph 4.2.5 above.

5.B. Respondent

5.B.1 The Respondent denies confusing similarity and asserts demonstrable preparations to use the domain names in issue – together with some other 100 automobile domain names – in connection with its Business Plan to promote automobile leasing and financing services. These are described in Mr. Martin's affidavit [see, paragraph 4.2.3 above]. This is, the Respondent says, evidence of intended "nominative fair use" of the Complainant's "PORSCHE" trademark. It follows, the Respondent says, that the three domain names in issue were neither registered in bad faith, nor have they been used in bad faith.

5.B.2 In the light of that Business Plan, the Respondent denies that those domain names were registered with the intention of selling them to the Complainant or to any other party. Furthermore, the Respondent says there is no evidence that the domain names have been offered for sale. The Response denies that any of the circumstances set out in paragraph 4(b)(ii) to (iv) of the Policy apply. The Response also states that there has been no intention to disguise the Respondent's identity as registrant of the domain names. The contact information provided to the service provider, eNom, has at all times been correct. Nor, the Respondent says, has there been any problem in the Complainant's US attorney contacting Mr. Martin, who even provided his cell phone number to facilitate such contact.

5.B.3 Identical or Confusingly Similar

5.B.3.1 The Respondent's case is that use of the suffixes "loan", "loans" and "lease" describe ancillary services to be offered in connection with the Respondent's own product. That product is the promotion of loans and leases for "PORSCHE" vehicles. The disputed domains do not, therefore, create the impression that the websites are official sources for PORSCHE's products or services.

5.B.3.2 The Response seeks to draw a distinction between the Complainant's primary business and financial services relating to the buying or leasing of PORSCHE vehicles. The former is the import, export and sales of PORSCHE vehicles, which is associated by the public with the Complainant (primary business). By contrast, even though the Complaint has registered trademarks for financial services relating to motor vehicles [paragraph 4.1.3 above], such financial services are associated with banks and financial institutions, not with the Complainant (PORSCHE). So, the Respondent says, consumers would view the domain names in issue as simply describing a third party business that offers financial services to those seeking to purchase PORSCHE vehicles.

5.B.3.3 In this way, the Respondent seeks to distinguish the facts in this case from those in Dr. Ing. h.c.F. Porsche AG v. Gary Charles Brown, a k a Gary Brown, a k a Charlie Brown, a k a Gary Charlie Brown, WIPO Case No. D2001-0919, where the domain names involved were <porscheimporter> and variations (primary business). Here, however, the generic suffixes described services routinely associated not with the Complainant (PORSCHE) but with third parties and such services as those, which the Respondent intends to promote. The domain names in issue are not, therefore, the Respondent says confusingly similar to the Complainant's "PORSCHE" trademarks.

5.B.4 Rights or Legitimate Interests

5.B.4.1 Proof of the Respondent's good faith intention to use the domain names in issue in connection with a bona fide offering of services is said to be demonstrated by registration of the 100 plus automobile "loan / lease" domain names, including <newcarloans.com> and <usedcarloans.com>.

5.B.4.2 The Response points to the Respondent's general bona fides as evidenced by its "www.cityloans.com" website [see, paragraph 4.2.1 above]. That business uses over 800 domain names and is a manifestly legitimate business. It is not indicative of a cybersquatter. Nor is registration of the 100 plus automobile "loan / lease" domain names preparatory to another legitimate business, namely the provision of automobile finance. Indeed, the fact that the three disputed domain names direct to the Yahoo!Autos website is further evidence of fair and legitimate use of the type envisaged in paragraphs 4(c)(i) and (iii) of the Policy.

5.B.4.3 The Response then points to the "fair use" doctrine which its says was established by the New Kids on the Block case, a 1991 decision of the US 9th Circuit. This doctrine is that anyone may use a trademark to describe its goods and services, provided that (1) there is a need to use the trademark; (2) use is made of only so much of the mark as is necessary; and (3) such use does not create the false impression that it is associated with the trademark proprietor.

5.B.4.4 The Response cites DaimlerChrysler A.G. v. Donald Drummonds, WIPO Case No. D2001-0160. This concerned use of the domain name <mercedesshop.com> by the respondent for a website providing a discussion forum where mechanics and owners of the complainant's vehicles discussed the case, maintenance and performance of those vehicles. The respondent also offered genuine MERCEDES parts and accessories for sale, which were obtained through fully authorized channels of distribution. The respondent also offered clearly identified quality, rebuilt, and used parts. The website also carried a disclaimer in the following terms:

"MercedesShop recognises that MERCEDES, MERCEDES BENZ, the three pointed star and various model numbers are registered trademarks of Daimler Chrysler. These terms are used for identification purposes only. MercedesShop is not affiliated in anyway with Daimler Chrysler."

5.B.4.5 A majority decision found for the respondent on the basis of legitimate interest:

"The domain name and the name of Respondent's web site "MercedesShop" is descriptive of the business conducted there. In conducting the business that Respondent is conducting, "it would be difficult, if not impossible for [Respondent] to avoid altogether the use of the word "Mercedes ... which [is] the normal term which, to the public at large, signify [Complainant's] cars." Volkswagenwerk Aktiengesellschaft v. Church, 4111 F. 2d 350 (9th Cir. 1969). Respondent's site contains a clear disclaimer, which states that it is displaying trademarks that belong to Complainant and that Respondent is in no way affiliated with Complainant. Moreover, Respondent operated the web site for more than two years without receiving any notice of dispute from Complainant. Accordingly, the majority finds that Complainant has failed to prove that respondent has no rights or legitimate interests in respect of the domain name at issue."

Although not mentioned in the Response, dissenting Panelist (Richard Page) concluded:

"Given the initial interest confusion created by Respondent's use of Complainant's trademark, I would find that Respondent's use of the Domain Name does not constitute fair use or the bona fide offering of goods and services, and thus does not satisfy the criteria of paragraph 4(c)(i). Therefore, I would find that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii)."

5.B.4.6 The Respondent's case is that it needs to use the automobile names in its proposed Business Plan to advise consumers that it offers lease and loan services for specific brands. The Respondent says that its intent is only to use the brand names of various automobiles, without any logos or other indicia or official wording. The Respondent explains that it intends to do nothing to create the impression that it is associated with the Complainant, Porsche. In the circumstances, the Respondent asserts that its proposed use of the 3 domain names in issue is lawful as a nominative fair use.

5.B.4.7 To this end the Respondent cites a number of US Court decisions illustrating application of the fair use doctrine, which cases the Respondent says are more generally representative of US law in this area than the two US Court decisions cited in the Complaint.

5.B.4.8 Finally, in relation to the Respondent's use of the 3 domain names in dispute to direct Internet users to the Yahoo!Autos website, the Response cited two WIPO decisions; Sweeps Vacuum & Repair Center .v. Nett Corporation, WIPO Case No. D2001-0031 and Dial-A-Mattress Operating Corp. v. Ultimate Search, WIPO Case No. D2001-0764. The first concerned the domain name <sweeps.com>. It was found that the respondent in that case had also registered numerous other domain names, the vast majority of which were purely descriptive in nature. The domain name in issue was used by the respondent to resolve to a website on which was located a directory page featuring links to various sites involving sweepstakes and related games. The Panel found that, before receiving any cease and desist letter from the Complainant, this prior use of the domain name in conjunction with a legitimate locator service was bona fide. The Panel further held that the respondent was using the <sweeps.com> domain name not in the trademark sense, but in the descriptive sense, describing the types of businesses (sweepstakes related) listed on the directory page.

5.B.4.9 In the second case cited, the domain name in issue was <matress.com>. The respondent operated a website at "www.matress.com", which provided advertiser referral links to vendors of mattresses and mattress-related products. The Panel dismissed the complaint on the grounds that the complainant failed to meet the first hurdle of paragraph 4(a) of the Policy – identical or confusingly similar. The Panel also dismissed the complaint as failing to meet the other requirements of paragraph 4(a). As to legitimate interests, the Panel concluded:

"We accept that a consumer who is either correctly or wrongly spelling the word "mattress" is mostly likely and obviously looking for a mattress and that the Respondent should not be unfairly hindered from running a web site directed to the sale of mattresses or the supply of information relating thereto. That is under, the Domain Name."

5.B.5 Registered and Used in Bad Faith

5.B.5.1 The Respondent asserts none of the circumstances set out in paragraph 4(b) of the Policy apply on the facts of this case. Further, by reason of its legitimate rights in the 3 domain names in issue, the Respondent says there can be no finding of bad faith.

5.B.5.2 The Respondent specifically denies any suggestion that the domain names in issue were registered for the purpose of selling them to the Complainant, whether through its <doughmains.com> business or otherwise.

5.B.5.3 The Respondent also denies that its proposed use of the three domain names and/or its actual use [through the Yahoo!Autos website] is intended to and/or will in fact mislead and trap users who seek genuine information about the Complainant and its products. Why, the Respondent says, would anyone interested in such information, type in porschelease.com. In reality, the Respondent says, such potential customers would use porsche.com, which is the Complainant's domain name for its official website [see, paragraph 4.1.4. above].

5.B.5.4 Further, in relation to users who are directed to the Yahoo!Autos website when typing in the domain name in issue, there would plainly be no likelihood of confusion with the Complainant's "PORSCHE" mark. Still further, paragraph 4(b)(iv) of the Policy is concerned with "intent" rather than confusion per se.

5.B.5.5. The Respondent distinguishes over two cases cited by the Complainant, on the basis that the facts were materially different. The cases are Porsche Cars North America, Inc et al .v. Spencer, 55 USPQ 2d 1026, 200 WL 64/209 and WIPO Case No. D2001-0919 [Dr. Ing. H.c.F Porsche A.G. v. Brown et al]. In both cases, the Respondent says that the defendant and respondent (respectively) offered the <porschesource.com> [Spencer case] and the <porscheimporter.com> etc domain sales for sale to the trademark owner, Porsche. As stated, no such offer has been made in this case: see, paragraph 5.B.5.2 above.

5.B.5.6 As another indication that there cannot be bad faith on the part of the Respondent, the Response points to the fact that the three domain names in issue were registered in June 1998, but that the Complainant's US trademark registration in Class 36 for PORSCHE FINANCIAL SERVICES was not applied for until later [May 2001 – see, paragraph 4.1.3 above].

5.B.5.7 In that respect, the Panel notes that the Complainant applied for PORSCHE in Class 36 for services including the rent or leasing of motor vehicles in Canada in 1990, and in Germany, the European Community and in certain other countries through an International Registration in 1996. As to these earlier registrations, the Respondent says they have no effect since they relate to registrations outside the Respondent's country of residence, the United States. For that proposition, the Respondent relies on WIPO Cases; Allocation Network GmbH v. Steve Gregory, WIPO Case No. D2000-0016 and VZ VermögensZentrum AG v. Anything.com, WIPO Case No. D2000-0527.

5.B.5.8 In WIPO Case No. D2000-0016, the Panel notes that the earliest of the complainant's registered trademarks [a German registration] was not published until after registration of the <allocation.com> domain name by the respondent [having an address in the Philippines]. The facts are, therefore, not on all terms with the present case.

5.B.5.9 In WIPO Case No. D2000-0527, the <vz.com> domain name, the Panel notes that what influenced the Decision in that case was the fact that the complainant's "VZ" mark was well known only in Switzerland and to some extent in Germany. It was not, the Panel observed, well known worldwide like, for example, the letters "BP". Further, the respondent was resident in the Cayman Islands. Again, it would seem that the facts are quite different in the present case, where the "PORSCHE" mark is an internationally well-known mark like BP.

5.B.5.10 The Complainant's assertion of bad faith by reason of the absence of available information about the registrant of the 3 domain names, Limex LLC, has already been dealt with in paragraph 5.B.2 above.

 

6. Discussion and Findings

6.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding:

• that the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

• that the Respondent has no rights or legitimate interests in respect of the domain name; and

• that the domain name has been registered and is being used in bad faith.

6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interest in the domain name in issue.

6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.

6.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.

6.5 Identical or Confusingly Similar

6.5.1. "PORSCHE" is a registered trademark of the Complainant in many countries and the name and mark have a worldwide reputation, The PORSCHE prefix of the 3 domain names in issue is the dominant and distinctive part of those names. Paragraph 4(a)(i) of the Policy does not require trade mark confusion, merely that the domain name is confusingly similar to a trademark or service mark in which the Complainant has rights. Plainly, that requirement is satisfied on the facts of this case.

6.5.2 However, if that is incorrect and some form of trademark confusion is a requirement of this paragraph of the Policy, Panelists have found that combining a well-known trademark with a generic suffix tends to aggravate, not dispel, likelihood of confusion. See, Nintendo of America, Inc. v. Tyasho Industries and Thomas Watson, WIPO Case No. D2001-0976.

6.6 Rights or Legitimate Interests

6.6.1. Here, the issue is whether the Respondent's actual use – the 3 domain names direct users to the Yahoo!Autos website – and/or its proposed use in relation to the planned <newcarloans.com> and <usedcarloans.com> business is a fair nominative use. In other words whether, on the evidence, the Respondent can bring itself within paragraphs 4(c)(i) or 4(c)(ii) of the Policy.

6.6.2. What amounts to making fair use of a domain name? This has arisen particularly in relation to domain names resolving to web sites at which the genuine branded goods are sold. Generally, while it may be fair use to use a third party's trademark on a website to describe the goods or services offered or in a metatag, many decisions have held that it is not fair use to use the trademark as a domain name. For example, in Canon Kabushiki Kaisha v. Price-Less Inkjet Cartridge Co., WIPO Case No. D2000-0878 the domain name in issue was <canoninkjet.com>. The registrant used that domain name for its website at which it was selling CANON inkjet products. Held, the respondent had rights to sell CANON products but had no right or legitimate interest to use the CANON mark for a domain name.

6.6.3. Other consistent Decisions where the addition of a generic descriptor has been held not to continue fair use included <buyserta.com>, Serta, Inc. v. Maximum Investment Corporation, WIPO Case No. D2000-0123; <olympiconlinestore.com>, United States Olympic Committee (USOC) v. Tri B-U-N Eco. Project, WIPO Case No. D2000-0435: <buyguerlain.com>. The trademark element of each domain is highlighted.

6.6.4. But, there have been conflicting decisions. For example, Canon USA Inc. v. Sims, WIPO Case No. D2000-0819, where the domain name <canoncopymachines.com> was permitted in the context of a website selling CANON copiers. The same view that under US law reference to a third party trademark – even in a domain name – is fair where it is used to identify the types of products or services sold was taken in Bridgestone Firestone Inc., v. Jack Myers, WIPO Case No. D2000-0190. The facts were, however, very different to the present case. There a dissatisfied former employee set up a website critical of the Company using the domain name <bridgestone-firestone.net>. Such was held to be fair use in that particular context, which involved US doctrine of free speech.

Indeed, in the Bridgestone case the Panelist said:

"In this case, the Respondent's principal purpose in using the domain name appears not to be for commercial gain, but rather to exercise his first Amendment right to criticise the Complainants."

Here, by contrast, the <newcarloans.com> and <usedcarloans.com> businesses, which it is proposed, would use, inter alia, the 3 domain names in issue would be a commercial venture.

6.6.5. As to the approach taken by US Federal Courts, the Panel reads them as, generally, not finding fair use when the domain name connects to a commercial website; [see, the ACPA Paccar v. Telescan Technologies case 319 F 3d 243 (6th Cir. 2003)]. However, the Panel does note the finding that there may be fair use where the use of the domain name is limited to selling products properly described by the trademark [see, the Ty Inc. v. Perryman case 306 F 3d 509 (7th Cir. 2002)]. Nevertheless, the New Kids on the Block "fair use" requirements set out by the Ninth Circuit are not, it seems to the Panel, inconsistent with a holding that, on the facts, a false impression may be created that the domain name is associated with the trademark proprietor.

6.6.6. This approach seems also consistent with trademark case law of the European Union. See for instance, the Decision of the European Court of Justice in BMW v. Deenik [Case C-63/97 1999 1 CMLR 1099] of February 1999. This concerned a mechanic and trader in second-hand / used BMW automobiles, who was not a part of BMW's authorized Dealer Network. He was also involved with the repair / servicing of BMW vehicles. Was the respondent entitled to promote his activities using the name descriptor "BMW Specialist"? Held, that a party can make use of a third party trademark only where necessary to indicate the origin of the goods or services. Such was fair use. It was not fair use to advertise the business as "BMW Specialist" when this was not necessary and could well be understood as indicating the respondent was an authorized BMW Distributor / Repairer, which he was not.

6.6.7. On the facts of this case, the proposed NewCarLoans and UsedCarLoans businesses are generic loan businesses for those purchasing automobiles. The 3 domain names in issue use the PORSCHE trademark to attract potential customers to the generic loan business. This is part of the Respondent's strategy of attempting to register domain names that incorporate virtually every major brand of automobiles: see, paragraphs 5.A.3.5 and 6 and 5.B.1 above. The Respondent's stated intentions are primarily pretextual, the apparent motivation being to exploit the trademark value of the trademark of the Complainants (Porsche) and other automobile manufacturers.

6.6.8. Thus, the Respondent has no right or legitimate interest to use the Complainant's famous "PORSCHE" trademark for promoting its business. Leases, loans or similar financial services relating to automobiles can be and currently are marketed and sold without use of a domain name incorporating the well-known "PORSCHE" brand or other well-known automobile brands.

6.6.9. In the light of the foregoing, the Panel concludes that the Respondent has no rights or legitimate interest in the 3 domain names in issue and, consequently, that the Complaint satisfies the second requirement of paragraph 4(a) of the Policy.

6.7. Registered and Used in Bad Faith

6.7.1. The Respondent clearly states that its intention is to attract Internet users to its proposed UseCarLoans and NewCarLoans website for the purpose of commercial gain through the offering and sale of products and services relating to PORSCHE and other automobiles. It is, in the Panel's view, inconceivable that such use will not generate a likelihood of confusion with the Complainant's "PORSCHE" trademark as to source or, more probably, some form of affiliation or endorsement.

6.7.2. Further, in the light of the Panel's finding under paragraph 4(a)(ii) that the Respondent has no rights or legitimate interests in the 3 domain names in issue, it follows that registration, the actual use in relation to the Yahoo!Autos website and the proposed primary use in the NewCarLoans and UsedCarLoans businesses are all in bad faith.

6.7.3. As to the Respondent's claimed bona fide registration of the domain names in June 1998, before the Complainant filed its US Class 36 application in May 2001 [paragraph 5.B.5.6 – 9 above], the Panel does not regard the cases cited by the Respondent applicable to the facts of the case. Here the Complainant's PORSCHE trademark is well known internationally and in relation to the core goods the first registrations date from the 1950's. Further, where one is dealing with business on the Internet, albeit presumably principally focused on the North American market, domain registrants ignore at their potential peril prior registered trademark rights in other major trading areas, such as Canada and the European Union.

6.7.4. While, in the light of the foregoing, the Panel finds the 3 domain names registered and used / intended to be used in bad faith, the Panel does not accept that the Complainant has made out a case under paragraphs 4(b)(i) of the Policy. There is no evidence of registration with a view to selling the domain names to the Complainant or any other party at a price in excess of the out of pocket costs directly related to those names. Nor does the Panel accept that the Respondent has attempted to hide the true identity of the Registrant of the domain names. These findings do not, however, negate the overall finding that the Complaint satisfies the dual requirements of paragraph 4(a)(iii) of the Policy.

 

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, <porschelease.com>, <porscheloan.com> and <porscheloans.com> be transferred to the Complainant.

 


 

David Perkins
Presiding Panelist

Bernhard Meyer-Hauser
Panelist

David E. Sorkin
Panelist

Dated: November 27, 2003

 

Источник информации: https://www.internet-law.ru/intlaw/udrp/2003/d2003-0649.html

 

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