Dr. Ing. h.c. F. Porsche AG v. Del Fabbro Laurent
Case No. D2004-0481
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 Respondent is Del Fabbro Laurent, of the British Virgin Islands, United Kingdom,
represented by Bernard von Reepinghen, Brussels, Belgium.
2. The Domain Names and Registrar
The disputed domain names are <porsche-buy.com> and <porschebuy.com>
(as the analysis is the same for both domain names, they will be referred to
collectively as the “Domain Names”), registered with OnlineNIC,
Inc (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 30, 2004. On July 1, 2004, the Center acknowledged receipt of the Complaint by email to Complainant, the representative of Complainant and the Respondent.
On July 1, 2004, the Center transmitted by email to Registrar a request for registrar verification in connection with the Domain Names at issue. On July 2, 2004, the Registrar responded by email to the Center (i) negating receipt of a copy of the Complaint, (ii) confirming that the Domain Names are registered with the Registrar, (iii) confirming that the Respondent is the current registrant of the Domain Names, (iv) providing details of the administrative contact, technical contact and billing contact for said registrations, (v) confirming that the Uniform Domain Name Dispute Resolution Policy (“the Policy”) applies to the Domain Names, (vi) confirming that the Domain Names will remain locked during the pending administrative proceeding, (vii) indicating that the language of the registration agreements is English, (viii) indicating that the Respondent has not submitted in its registration agreements to the jurisdiction at the location of the principal office of the Registrar for court adjudication of disputes concerning or arising from the use of the Domain Names.
In response to two notifications of administrative deficiency of July 2, 2004, by the Center to the Complaint, the deficiencies were cured and the Center verified that the Complaint satisfied the formal requirements of 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”) on July 8, 2004.
On the same day, in accordance with the paragraphs 2(a), 4(a) and 5(a) of the Rules, the Center formally notified the Respondent by post and email of the Complaint, that the proceedings commenced on July 8, 2004, and that the Respondent was required to submit a response on or before July 28, 2004.
After Mr. Bernard von Reepinghen informed the Center on July 9, 2004, that he was representing the Respondent, the Center provided Mr. Bernard von Reepinghen with the Complaint and the official notification of complaint on July 12, 2004.
An email from the technical and billing contact of the Respondent to the Center on July 14, 2004, offering assistance, was answered by the Center on July 15, 2004, informing the contact that as they were not the registrant of the disputed domain name, no assistance was required.
The Response was filed with the Center within time on July 28, 2004.
Requests by the Respondent and the representative of the Respondent by email on July 15, 2004, to the Center for a three-member Panel were, after a request for clarification by the Center, withdrawn by the representative of the Respondent by email of July 29, 2004.
On July 23, 2004, the Complainant submitted an amendment to the Complaint accepting the jurisdiction of the courts where the Respondent is located in the event of a post decision lawsuit.
On August 6, 2004, after having received a Statement
of Acceptance and Declaration of Impartiality and Independence from Michael A.R. Bernasconi
in accordance with Paragraph 7 of the Rules, the Center notified the representatives
of the Complainant and of the Respondent by email that Michael A.R. Bernasconi
has been appointed as Administrative Panel (Sole Panelist) and that the decision
is anticipated by August 20, 2004.
4. Factual Background
The Complainant is a company domiciled in Germany. All over the world, the Complainant is very well known for the manufacturing of sport cars under the trademark “PORSCHE.”
The Complainant has provided evidence of a number of trademark registrations consisting of or incorporating the name “PORSCHE” in many countries, including the United Kingdom (registration No. 729217), registered for motorcars and parts thereof on April 14, 1954; the United States (registration No. 0618933), registered for automobiles and parts thereof on January 10, 1956; Canada (registration No. TMA117101), registered for automobiles and parts thereof on March 4, 1960; Germany (registration No. 643195), registered for motorcars, parts thereof and accessories thereto on August 26, 1953; an international registration (registration No. 179928), registered for motorcars, parts thereof and accessories thereto on October 8, 1954, and an European trademark registration (application No. 000073098), registered for various classes of goods and services on December 12, 2000. Further, Complainant is running a portal on the internet at the domain name <porsche.com>, which serves as gateway to websites aimed at audiences from specific countries or regions offering information on Complainant, Complainant’s products, authorized distributors and related information.
The Respondent registered the domain name <porsche-buy.com> on September 4, 2003, and the domain name <porschebuy.com> on December 17, 2002.
Under the websites of both Domain Names at issue, used Porsche cars are offered for sale. On the entry page of the websites under the Domain Names, the user is invited to view car offers or to place car ads.
The websites under the Domain Names contain links to websites “www.ferraribuy.com,” “www.jaguarbuy.com,” “www.jaguar-buy.com” and “www.racecarsbuy.com” under which respectively used Ferrari, Jaguar and race cars are offered. Of one of these domain names the Respondent is the registered owner. The technical and billing contact of the Respondent appears as registered owner of the other domain names.
The websites under the Domain Names contain the following disclaimer: “<porsche-buy.com> respectively <porschebuy.com> is not sponsored by, authorized by, not sanctioned by Porsche AG, Porscheplatz 1, DE-70435 Stuttgart.”
On January 16, 2004, Complainant wrote to Respondent
to demand the transfer of the Domain Names. The Respondent refused to transfer
the Domain Names unless Complainant would “make a correct offer.”
5. Parties’ Contentions
Complainant contends that the disputed Domain Names are confusingly similar to the trademark “PORSCHE” of the Complainant because “PORSCHE” is the distinctive component of the disputed Domain Names, while the components “buy” and “.com” are descriptive and do not prevent confusion, as the disclaimer does neither. Further, Complainant claims that Respondent has no rights or legitimate interests in respect of the disputed Domain Names and has registered and is using the Domain Names in bad faith since the Respondent is not an authorized dealer of the Complainant and he has engaged in a pattern of conduct by registering domain names containing well known trademarks, attempting so to attract, for commercial gain, Internet users to his websites by creating a confusion, of which the Respondent is fully aware by posting the disclaimer on the websites.
Respondent contends that there is no likelihood of
confusion between the trademark of the Complainant and the Domain Names since
the calligraphic presentation and the colors used are totally different. Respondent
further contends that he has rights and legitimate interests in the disputed
Domain Names, since he makes a legitimate non-commercial use of the Domain Names
by offering platforms to all Porsche owners who wish to sell their Porsche car
as well as to persons interested to buy a Porsche car, which service is provided
free of charge. Finally, Respondent denies that he registered and that he is
using the disputed Domain Names in bad faith.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
A. The domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
B. the Respondent has no rights or legitimate interests in respect of the domain name; and
C. the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
It is undisputed that the Complainant is the owner of the trademark “PORSCHE.”
The disputed Domain Names consist of the Complainant’s trademark to which
(1) the suffix “.com” and (2) the generic term “buy”
is added. The suffix “.com” is a generic top level domain name,
which of course is without legal significance to render a domain name dissimilar
or the prevent customer confusion. By simply affixing the generic term “buy”
to Complainant’s trademark and registering such combination of words (with
and without hyphen), the Respondent did create a confusingly similarity between
the Domain Names and the trademark(s) of the Complainant. This view is consistent
with the opinion expressed by other Panels in a good number of cases (cf. Dr.
Ing. h.c. F. Porsche AG v. Ron Anderson, WIPO
Case No. D2004-0312; Siemens Aktiengesellschaft v. Telmex Management
Services Inc., WIPO Case No. D2003-0995;
Koninklijke Philips Electronics N.V. v. NicNax,
WIPO Case No. D2001-1245; Heineken Brouwerijen B.V. v. Mark Lott, WIPO
Case No. D2000-1487; DaimlerChrysler A.G. v. Donald Drummonds, WIPO
Case No. D2001-0160; Ermenegildo Zegna Corporation, Lanificio Ermenegildo
Zegna & Figli S.p.A., Consitex S.A. v. Steven Shiekman, WIPO
Case No. D2000-1375.
The differences of the calligraphic presentation and of the colours between
the trademark and the Domain Names do not prevent confusion. Due to the specific
nature of Internet domain names, whose input takes place by means of a keyboard,
the aural and conceptual aspects of a trademark generally outweigh the visual
aspects (see Pomatello S.p.A. v. Richard Tonetti, WIPO
Case No. D2000-0493).
Therefore, the Panel finds the Domain Names, i.e. the domain names <porsche-buy.com> and <porschebuy.com>, to be confusingly similar with the Complainant’s trademark “PORSCHE.” Correspondingly, the first criterion, as per Paragraph 4(a) of the Policy, is established.
B. Rights or Legitimate Interests and Registration and Use in Bad Faith
This case raises the question of whether the Respondent has rights and legitimate
interests to use the disputed Domain Names in connection with a bona fide
offering of goods or a noncommercial or fair use without the intent for commercial
gain. The extent to which a seller of legitimate goods or services can reflect
that fact by using the manufacturer’s name as part of a domain name is
a difficult issue. Some uses may be legitimate, others not, depending on the
extent to which they accurately reflect the user’s connection with the
mark owner (see World Wrestling Federation Entertainment, Inc. v. Ringside
Collectibles, WIPO Case No. D2000-1306).
In this case, there is no dispute that the websites under the disputed Domain Names offer Porsche goods and services since prior to the commencement of this case. Internet users are invited to view offers for the purchase of used Porsche cars or to place advertisements for the sale of used Porsche cars. The only issue before the Panel, then, is whether Respondent’s offerings may be characterized as bona fide.
To be bona fide, the offering must meet several requirements (see Philip Morris Incorporated
v. Alex Tsypkin, WIPO Case No. D2002-0946;
Oki Data Americas, Inc. v. ASD, Inc., WIPO
Case No. D2001-0903). Those include, the following:
- A respondent must actually be offering the goods or services at issue;
- A respondent must use the website to sell only the trademarked goods; otherwise, it could be using the trademark to bait internet users and then switch them to other goods;
- A respondent must take steps to prevent confusion by making clear in its use of the domain name that it is not the trademark owner, even if it offers legitimate goods, by accurately disclosing the registrant’s relationship with the trademark owner; i.e. it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, or that it is an authorized or exclusive agent;
- A respondent does not corner the market in all domain names or deprives the trademark owner of reflecting its own mark in a domain name.
The Panel notes that the Oki Data case involved parties in an existing distributor relationship, unlike the present case, where the Complainant has not authorised the Respondent to act as its distributor or otherwise. The Panel also notes that the fact that the parties were in a legal relationship may have been taken into account in the Oki Data decision, although the Phillip Morris decision did involve parties that were not in a legal relationship. That said, and taking into account the nature of the Oki Data criteria as such, the Panel finds that the facts in the present case do not contain elements that would, a priori, make it inappropriate to proceed with the application of the Oki Data test in these particular circumstances.
In contradiction to other WIPO cases, in which a respondent
used domain names corresponding to a trademark of a complainant without actually
offering corresponding goods or services, in the present case the Respondent
was able to prove that he is indeed using the Domain Names and that he is indeed
offering corresponding goods, PORSCHE used cars, under the Domain Names. Accordingly,
the Respondent did not fail to show the use of the Domain Names in connection
with the offering of goods and services (see Dr. Ing. h.c. F. Porsche AG
v. Ron Anderson, WIPO Case No. D2004-0312;
Guerlain S.A. v. HI Investments, WIPO
Case No. D2000-0494; World Wrestling Federation Entertainment, Inc. v.
Ringside Collectibles, WIPO Case No. D2000-1306).
Respondent is using the websites under the Domain Names as a market place for used PORSCHE cars only. No other brands are offered so that this case does differ from those where a respondent is abusing of a certain domain name to entice Internet users to its site.
The Domain Names are descriptive of the platforms
conducted there under. In creating these websites, the use of the word “PORSCHE”
has an evident logic, as “PORSCHE” is the normal term to signify
the products offered. The Complainant did not produce any evidence according
to which the Respondent would be able to describe in the Domain Names the goods
offered under the Domain Names without making any reference to the trademark
of the Complainant. Accordingly, no evidence has been produced by Complainant
that Respondent is using the Domain Names in bad faith, just for a mere piggyback
for other products, non-related to those referred to in the Domain-Names (cf.
ISL Worldwide & FIFA v. Western States Ticket Service, WIPO
Case No. D2001-0070, where the factual background was different).
The links to similar websites for used Jaguar cars,
used Ferrari cars and used racecars lead to websites that do indeed offer such
expected products (i.e. Ferrari, Jaguar and other race cars respectively) under
different domain names. Clearly designated links to websites, under which other
brands or products are offered, cannot be considered as the offering of other
brands or products under the Domain Names, provided they take up only a minor
part of the site and the overall impression of that site remains that of a site
offering corresponding goods. Therefore, the present case does differ from those
where a respondent is predominantly offering under a certain domain name goods
and services non-related to that domain name (cf. Philip Morris Incorporated
v. Alex Tsypkin, WIPO Case No. D2002-0946;
DaimlerChrysler A.G. v. Donald Drummonds, WIPO
Case No. D2001-0160; ISL Worldwide and FIFA .v. Western States Ticket
Service, WIPO Case No. D2001-0070;
Nikon, Inc. v. Technilab, WIPO Case
Respondent does disclose on the entry websites by a disclaimer that he is neither affiliated to nor authorized by the Complainant itself. No evidence has been produced that the disclaimer was posted after receipt of Complainant’s objection only or that the Respondent has improperly communicated with Internet users in any other way. After receipt of Complainant’s objections, Respondent has placed the disclaimer more prominently. The Panel expects the Respondent to maintain the disclaimer posted in the websites, at least as it currently is.
Further, the Respondent does not use the distinctive
characters nor the logo nor the drawing of the “PORSCHE” trademark,
but uses a different calligraphic presentation. Therefore, and considering that
the websites contain advertisements for used PORSCHE cars, Internet users are
not misled to assume that the Respondent’s websites are run by the trademark
owner itself, an affiliate or an official sales agent of the Complainant. On
the contrary, it is clear that under the Domain Names used Porsche cars are
offered for sale by third parties (see also DaimlerChrysler A.G. v. Donald
Drummonds, WIPO Case No. D2001-0160,
in contradiction to cases, in which the disclaimer was placed after Complainant’s
objection only, such as in Dr. Ing. h.c. F. Porsche AG v. Ron Anderson,
WIPO Case No. D2004-0312 or Houghton Mifflin
Co. v. The Weathermen, Inc., WIPO Case
The Respondent has not registered multiple domain names containing the trademark
“PORSCHE,” but the two domain names affixed by the word “buy.”
In addition, the domain name <jaguarbuy.com> is registered by the Respondent,
but there is no clear evidence that the domain names <ferraribuy.com>
and <jaguar-buy.com> are registered by the Respondent as well, since they
are not registered in his name but with the same contacts only. However, the
registration of these three to five domain names, under which a corresponding
offering of goods and services is conducted, for which the domain names are
descriptive, cannot be qualified per se as an abusive pattern of conduct.
No evidence was produced by Complainant that the Respondent has registered domain
names consisting of famous trademarks to corner the market for such products
or to deprive the trademark owner of reflecting its own mark in a domain name.
There are plenty of other variations the trademark for others and the Complainant
is not deprived in the use of its own trademark (see Magnum Piering, Inc.
v. Mudjackers and Garwood S. Wilson, Sr., WIPO
Case No. D2000-1525).
Summarizing, in this case Complainant has not presented evidence that undermines the bona fides of Respondent’s use: Respondent’s conduct meets all the above mentioned requirements of a bona fide offering. Since the offering of goods and services fulfils the requirements to be bona fide and the Internet users are not misled, it is not of relevance if the websites under the disputed Domain Names are used for a commercial or a noncommercial purpose.
Accordingly, the Panel finds that the Respondent has a legitimate interest
(under the Policy) in using the Domain Names. Under the present facts if the
Panel were to find in favour of the Complainant, the Panel can conceive of no
case in which a party interested in the sale of certain used goods could ever
register a domain name descriptive of, at least to a certain reasonable extent,
that business (cf. DaimlerChrysler A.G. v. Donald Drummonds, WIPO
Case No. D2001-0160).
In light of the above finding, that the Respondent has successfully established its right and legitimate interest and good faith, it is unnecessary for the Panel to consider the further question as to whether or not the domain name has been registered in bad faith.
To conclude, the Panel notes that the Policy was designed to prevent the extortionate behavior commonly known as cybersquatting. Particularly, the Policy was not designed to establish for the holder of a strong trademark a bar to entry of any online competitors or other online legitimate sellers.
Whether the use of Complainant’s trademark on Respondent’s websites
constitutes trademark infringement is not for the Panel to decide. If Complainant
wishes to pursue that issue, other forums are available (DaimlerChrysler
A.G. v. Donald Drummonds, WIPO Case No.
The Complainant has failed to establish that the Respondent has no rights to or legitimate interest in the domain names <porsche-buy.com> and <porschebuy.com>. Accordingly, the Panel denies Complainant’s request that the domain names <porsche-buy.com> and <porschebuy.com> be transferred.
Michael A.R. Bernasconi
Dated: August 20, 2004