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Dr. Ing. h.c. F. Porsche AG v. Kudos Trust/Domains by Proxy, Inc. and Standard Tactics LLC
Case No. D2006-0164
1. The Parties
The Complainant is Dr. Ing. h.c. F. Porsche AG, Stuttgart, Germany, represented by Lichtenstein, Kцrner & Partners, Germany.
The Respondents are Kudos Trust/Domains by Proxy, Inc., Queensland, Australia
(“First Respondent”), and Standard Tactics, Santa Fe, New Mexico,
United States of America (“Second Respondent”).
2. The Domain Name and Registrar
The disputed domain name <porschepartsite.com> (“Domain Name”)
is registered with Go Daddy Software.
3. Procedural History
The Complaint against the First Respondent was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 7, 2006. On February 7, 2006, the Center sent Go Daddy Software (“Registrar”) an e-mail requesting registrar verification in connection with the domain name at issue. On February 8, 2006, the Registrar informed the Center that the Second Respondent, not the First Respondent, was the registrant. The Registrar provided to the Center the contact details for the administrative, billing, and technical contact for the Second Respondent.
In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on February 10, 2006. The Center verified that the Complaint together with the amendment to 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 Respondents of the Complaint, and the proceedings commenced on February 27, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response(s) was March 19, 2006. The Respondents did not submit a Response. Accordingly, the Center notified the Respondents’ default on March 20, 2006.
The Center appointed Alfred Meijboom as the sole panelist in this matter on March 24, 2006. The Panelist finds that it was properly constituted. The Panelist 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.
Furthermore, Mr. Daryl Grant, on behalf of the First Respondent, sent the Center an e-mail on February 17, 2006. The Complainant replied by e-mail on Monday February 20, 2006. Subsequently, Mr. Daryl Grant sent the Center another e-mail on March 22, 2006. It is in the sole discretion of the Panelist to determine whether to admit and consider this communication.
The First Respondent has not submitted a formal Response
in the sense of paragraph 5 of the Rules. The e-mails by Mr. Daryl Grant are
the only documents in which the opinion regarding this matter of the First Respondent
is presented. In general, the Panelist considers it of high importance that
a respondent has the chance to defend itself. Therefore, the Panelist decides
to admit and consider both emails of Mr. Daryl Grant sent on behalf of the First
Respondent as well as the Complainant’s response.
4. Factual Background
The Complainant is the world famous sports car manufacturer and the proprietor of a large number of trademark registrations worldwide including registrations of the mark PORSCHE in the United States and Australia, covering a wide range of goods and services.
The Complainant operates the websites “www.porsche.de” and “www.porsche.com”.
On May 10, 2005, the First Respondent registered the Domain Name with the Registrar.
On September 12, 2005, the Complainant sent a cease and desist e-mail to the First Respondent complaining about the Domain Name. The letter ended with a threat to launch, inter alia, a complaint under the Policy if the First Respondent would not transfer the Domain Name to the Complainant.
The First Respondent claims to have sent the Complainant an e-mail on September 16, 2005, offering to cancel the Domain Name. The Complainant denies to have received this e-mail.
The First Respondent claims that it ordered to cancel the Domain Name and that it received the Registrar’s confirmation thereof on September 16, 2005.
The Complainant has provided an undated printout of the Whois database, according to which the registration was made under an Whois privacy agreement of Domains by Proxy. The Complainant states that this database search was conducted on February 6,2006.
The Domains by Proxy company is an affiliated company
of the Registrar (under reference to the findings of the Panels in Dr. Ing.
h.c. F. Porsche AG v. Domains by Proxy, Inc and Sabatino Andreoni, WIPO
Case No. D2003-0230, and Dr. Ing. h.c. F. Porsche AG v. Domains by Proxy,
Inc. and Vladimir Putinov, WIPO Case No.
D2004-0311) that provides Whois privacy for domain name registrants.
The Complainant filed its Complaint against the First Respondents on February 7, 2006.
It appears that, having been notified of the launch of the Complaint, the Registrar changed the Whois record for the Domain Name and entered the name of the current registrant. See the domain name proxy agreement, paragraph 4(c), which reads:
“You further understand and agree that if DPB [Domains By Proxy] is named as a defendant in, or investigated in anticipation of, any legal or administrative proceeding arising out of Your domain name or Your use of DBP’s services, ownership of Your private domain name will automatically revert back to You and Your identity will therefore be revealed in the Whois directory.”
This was however not the name of the First Respondent but the name of Second Respondent. As this transfer from the First to the Second Respondent was not entirely clear, the Complainant nonetheless filed an amendment to the Complaint on February 10, 2006, adding the Second Respondent.
The Domain Name redirects to a parking website with
a reference to the Registrar and with many links to other websites and two commercial
banners. This was also the case when the First Respondents were the registrants
mentioned in the Whois database.
5. Parties’ Contentions
The Complainant has launched the Complaint against different Respondents. According to the Registrar’s Whois database, the current registrant of the Domain Name is the Second Respondent. The Complainant contends that there are reasons to believe that the First Respondent in practice behind the registration.
The Complainant contends that the First Respondent, Kudos Trust, still is the beneficial owner of the Domain Name.
According to paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the Domain Name, the Complainant is required to prove that the three elements mentioned below are met. The Complainant makes the following assertions with respect to these elements:
(i) The Domain Name is identical or confusingly similar to the trademarks in which the Complainant has rights.
Being of descriptive nature neither the suffix “.com” nor the words “part” and “site” prevent similarity. On the contrary, “part” and “site” indicate an official website from the Complainant dealing with parts for Porsche cars.
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name.
There has never been a business relationship between the Complainant and the Respondents, nor are the Respondents official dealers. The Respondents do not have a legitimate interest as described in paragraph 4(c) of the Policy. The Respondents and the Registrar are accomplices in act of cybersquatting, all lacking a legitimate interest in the Domain Name.
(iii) The Domain Name was registered and is being used in bad faith.
The Respondents are aware of the Complainant’s name and trademark, which is incorporated in the Domain Name combined with descriptive words referring to Porsche cars. They have no legitimate interest in registering and using the Domain Name. The Domain Name is used for a parking site with commercial ads and sponsored links generating click through fees. The Respondents obstruct, for commercial gain, the Whois system and the UDRP system, and are therefore acting in bad faith.
The Second Respondent did not reply to the Complainant’s contentions.
The First Respondent claims that it ordered to cancel
the Domain Name and that it received the Registrar’s confirmation thereof
on September 16, 2006. The First Respondent further claims that it no longer
has ownership of or association with the Domain Name and therefore should no
longer be a Respondent in this matter.
6. Discussion and Findings
Procedural Issue: Correct Respondent(s)
It is required that the Panelist determines who is the correct Respondent in these proceedings, as it is only in respect of that person or entity that it needs to be proven that it has no rights or legitimate interests in the Domain Name and that it has acted in bad faith.
The Complainant believes that the First Respondent is the beneficial owner of the Domain Name, because a couple of days after the Complainant sent the First Respondent a cease and desist letter, the Domain Name registration was hidden under a Who-is privacy agreement. The First Respondent is known to offer domain name holders anonymity by acting as a ‘front’ in the Whois database. Based on the timing of the First Respondent’s request of the Whois privacy agreement, the Complainant considers this as an attempt to escape administrative or legal proceedings.
The Panelist notes that it is not the usual course of events when a domain name holder wishes to be anonymous that it starts with publishing its full contact details as the registrant in the Whois database, and then after being approached, tries to hide behind the Domain by Proxy address.
In the present, case it is undisputed that after the Complaint was filed with the Center and served on the First Respondent, the Domain Name was transferred to the Second Respondent.
Paragraph 8(a) of the Policy determines that the domain
name holder “may not transfer [your] domain name registration to another
holder (i) during a pending administrative proceeding brought pursuant to paragraph
4 […]. We reserve the right to cancel any transfer of a domain name registration
to another holder that is made in violation of this subparagraph”. It
has been decided in several Panel decisions that, to avoid injustice to complainants,
paragraph 8(a) of the Policy should be interpreted as applying from the initiation
of the proceeding (by the filing of the complaint) rather than from the formal
commencement of the proceeding under Paragraph 3(a) (e.g. Imperial Chemical
Industries, PLC v. Oxford University, WIPO
Case No. D2001-0292 and Disney Enterprises, Inc. v. John Zuccarini, Cupcake
City and Cupcake Patrol, WIPO Case No.
For these reasons, the Panelist finds that the transfer
from the First Respondent to the Second Respondent cannot be recognized and
must therefore be cancelled for the purpose of these proceedings according to
Paragraph 8(a) of the Policy. The Panelist considers the First Respondent (the
registrant at the time in which the Complaint was filed) as the primary Respondent
in this proceedings (Infospace, Inc. v. Siavash Jimmy Behain,
et al., WIPO Case No. D2000-1631 and
Dr. Ing. h.c. F. Porsche AG v. Domains by Proxy, Inc. and Vladimir Putinov,
WIPO Case No. D2004-0311). From this perspective,
the Panelist considers it unnecessary to verify whether or not the First and
the Second Respondent are one and the same company or may be affiliated.
Any transfer which has occurred will not in any way prevent implementation of the Panelist’s decision, and the Registrar will be bound to transfer the Domain Name, if the case be, in compliance with the Panelist’s decision.
A. Identical or Confusingly Similar
The Complainant has several trademark registrations for PORSCHE for a wide variety goods and services all over the world, including in the United States and Australia. Therefore the Panelist finds that the Complainant has rights in the PORSCHE trademarks.
The relevant part of the Domain Name is “porschepartsite”. The
term “porschepartsite” includes the trademark PORSCHE in its entirety.
The word “site” obviously refers to website and “part”
can be considered to be a reference to car components. The descriptive nature
of the added words “part” and “site” leads to the conclusion
that PORSCHE is the dominant and distinctive part of the Domain Name. In accordance
with previous WIPO decisions, the Panelist is of the opinion that the addition
of descriptive words, in the present case “part” and “site”,
does not reduce the likelihood of confusion between the PORSCHE trademarks and
the Domain Name (e.g. Microsoft Corporation v. J Holiday Co. WIPO
Case No. D2000-1493 and Telstra Corporation Limited v. Ozurls WIPO
Case No. D2001-0046). As a result thereof, the Panelist considers the Domain
Name, of which the distinctive part is identical to the PORSCHE trademarks,
confusingly similar to the PORSCHE trademarks.
B. Rights or Legitimate Interests
The First Respondent has used the Domain Name for redirecting to a website, which appears to be a holding page. There has been no information on the website suggesting a legitimate right to use the Domain Name porschepartsite.com. Neither is there any other evidence of circumstances as described in paragraph 4(c) of the Policy or any other circumstances which could indicate that the Respondent has any rights or legitimate interests to the Domain Name.
Consequently, the Panelist finds that the First Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
The PORSCHE trademarks are famous all over the world. Therefore, it is reasonable
to conclude that only someone who was familiar with the PORSCHE trademarks could
have been interested in taking possession of the Domain Name (e.g. Harrods
Limited v Vision Exact, WIPO Case No.
D2003-0723). In the present case, we know for a fact that the First Respondent
knew the Complainant and its PORSCHE trademarks, since the First Respondent
has infringed on the Complainant’s trademark rights before (Dr. Ing.
h.c. F. Porsche AG v. Domains by Proxy, Inc and Sabatino Andreoni, WIPO
Case No. D2003-0230 and Dr. Ing. h.c. F. Porsche AG v. Domains by Proxy,
Inc. and Vladimir Putinov, WIPO Case No.
D2004-0311). Consequently, the Panelist finds that the Domain Name was registered
in bad faith by the First Respondent.
The Complainant must also prove that the Respondent is using the Domain Name in bad faith. In this respect, the Complainant asserted and provided evidence that the Domain Name was redirected to a parking website with a reference to the Registrar and with many links to other websites and two commercial banners.
According to the Policy, paragraph 4(b), an indication for use in bad faith is if a respondent is intentionally attempting to attract, for commercial gain, internet users to his website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of his website or of a product or service on his website. When using the Domain Name, the First Respondent created a likelihood of confusion apparently with the intention to take advantage of the reputation of the famous PORSCHE trademarks generating traffic to his own website.
Taken the above into account, the Panelist finds that
the Domain Name has been used in bad faith.
In accordance with paragraphs 4(i) of the Policy and 15 of the Rules, that the Domain Name <porschepartsite.com> be transferred to the Complainant.
Dated: April 7, 2006