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Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh [2004] GENDND 1112 (24 August 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh

Case No. D2004-0488

1. The Parties

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

The Respondent is Rojeen Rayaneh, of Tehran, Islamic Republic of Iran.

2. The Domain Name and Registrar

The disputed domain name <porsche-me.com> is registered with BulkRegister.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 1, 2004. On July 2, 2004, the Center transmitted by email to BulkRegister.com a request for registrar verification in connection with the domain name at issue. On July 7, 2004, BulkRegister.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 July 8, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was July 28, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 4, 2004.

The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on August 10, 2004. 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

4.1. Complainant has built sports cars for more than half a century, utilizing PORSCHE as the distinctive part of its trade name. The trademark “Porsche” is known throughout the world and associated with a reputation for high quality performance cars. Porsche cars are distributed worldwide, including to the Middle East, in particular the UAE and Iran.

4.2. Complainant owns numerous trademarks incorporating the word “Porsche” including, but not limited to:

Iranian Trademark PORSCHE No. 71039, registered August 24, 1993, (vehicles, also various classes of consumer products including “data processing equipment and data equipment with data programs”);

UAE Trademark No. 2333, registered September 25, 1995, (automobiles and their parts and accessories and all goods in International Class 12);

US Trademark PORSCHE Reg. No. 0618933, registered January 10, 1956 (automobiles and parts thereof);

Canadian Trademark PORSCHE and shield: TMA117101, filed December 2, 1958, registered March 4, 1960 (automobiles and parts thereof);

German Trademark No. 643195, registered August 26, 1953 (cars and parts thereof);

International Registration No. 179928, based on the foregoing, registered October 8, 1954;

European Trademark Registration No. 000073098, priority date April 1, 1996, registered December 12, 2000 (various classes of goods and services, including in Class 9, computer hardware and software).

4.3. The Complainant operates its principal web site at “www.porsche.com,” which links to national and regional web sites located at various ccTLDs. These include one for users from the Middle East region, including Iran and the United Arab Emirates, at “http://www3.me.porsche.com/english/pme/home.html,” incorporating the geographical abbreviation “me” intended to mean “Middle East.”

4.4. Nothing is known about the Respondent except for information provided by the Complainant. According to this information, Respondent operates the web site to which the disputed Domain Name resolves at “www.porsche-me.com,” uses the trade name “Rojeen co. Ltd” and claims to have grown successfully to be a major supplier of computer cases, keyboards, mouse-type interface devices and loudspeakers. Complainant says that the name “Rayaneh” in Respondent’s Domain Name registration details means “computer” in the Farsi language, and that the web site of the disputed Domain Name features computer cases.

4.5. On March 25, 2004, the Complainant sent a comprehensive cease and desist letter to Respondent’s notified email address and to the fax number in Tehran available in the contact section of Respondent’s web site to which the disputed Domain Name resolved. Both messages were undeliverable. The cease and desist letter was sent to the fax number in the UAE available in the contact section of Respondent’s web site and there was no indication that it was not delivered. The cease and desist letters requested a reply by April 30, 2004. No reply was received.

5. Parties’ Contentions

A. Complainan

5.1. Complainant contends that the disputed Domain Name <porsche-me.com> is confusingly similar to Complainant’s trademark PORSCHE and that the suffix “-me” does not detract from such confusion.

5.2. Respondent has no rights or legitimate interests in respect of the disputed Domain Name.

5.3. There is no evidence of the Respondent’s use of or demonstrable preparations for use of the disputed Domain Name in connection with a bona fide offering of goods or services. Respondent does not have any business relationship with Complainant. Respondent is not commonly known by the Domain Name. There is no evidence of a non-commercial or legitimate fair use of the Domain Name by Respondent.

5.4. Respondent has registered and used the disputed Domain Name in bad faith.

5.5. Respondent must have known of Complainant’s well-known, long-established, prestigious and world-famous trademark and has chosen to use it in place of Respondent’s own trade name in a Domain Name. Respondent had the bad faith intention of diverting Internet users from Complainant to Respondent’s own web site.

5.6. Complainant requests that the disputed Domain Name be transferred to Complainant.

B. Respondent

5.7. The Respondent has not denied or replied to the Complaint and has not made any submissions to this proceeding.

6. Discussion and Findings

Jurisdiction of Administrative Panel

6.1. Paragraph 4(a) of the Policy states in respect of a Domain Name holder:

“You are required to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable Provider, in compliance with the Rules of Procedure, that

(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) you have no rights or legitimate interests in respect of the domain name; and

(iii) your domain name has been registered and is being used in bad faith.

6.2. The Complainant has made the relevant assertions as in 6.1 above. This dispute is properly within the scope of the Policy and the Administrative Panel has jurisdiction to decide the dispute.

Whether the Domain Name is Identical or Confusingly Similar to a Trademar

6.3. The disputed Domain Name <porsche-me.com> as registered by the Respondent embodies and substantially comprises the Complainant’s well-known registered trademark PORSCHE. Long-established precedent has generally recognised confusing similarity where well-known trademarks have been adapted with a wide range of prefixes or suffixes. Given particularly the Complainant’s use of the adjunct “me” to designate the Middle East area in one of its own Domain Names, the suffix “-me” does nothing to distinguish the disputed Domain Name from the trademark but increases the scope for confusion. The Panel finds for the Complainant in terms of Paragraph 4(a)(i) of the Policy.

Whether Respondent has Rights or Legitimate Interests in Respect of the Domain Name

6.4. The Complainant must satisfy the Panel that the Respondent has no rights or legitimate interests in the disputed Domain Name. The Complainant states and has provided documentary evidence that it has registered and used the word trademark PORSCHE in various countries of the world for more than fifty years. Registration of the trademark PORSCHE extends specifically to the Islamic Republic of Iran, being the domicile recorded by the Respondent. The Complainant’s evidence is that it has not licensed the trademark to the Respondent nor given the Respondent any right to use it. Complainant states that the Respondent has no legitimate interest in registering or using the Domain Name.

6.5. The Respondent has neither denied the Complainant’s claims nor availed itself of any defence, including those listed under Paragraph 4(c) of the Policy. Respondent does not claim to have used the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or to have been commonly known by the Domain Name; or to have made a legitimate noncommercial or fair use of the Domain Name. Any actual use of the Domain Name for the offering of goods and services cannot legitimise an otherwise illegitimate use. Whilst Respondent is not obliged to reply and the Complainant is still faced with the task of proving a negative, the Panel is mindful of the principle adduced in Pomellato S.p.A. v. Richard Tonetti, WIPO Case No. D2000-0493, to the effect that “non-response is indicative of a lack of interest inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights.” The Panel finds for the Complainant in terms of Paragraph 4(a)(ii) of the Policy.

Whether the Domain Name Has Been Registered and Is Being Used in Bad Faith

6.6. In accordance with Paragraph 4(a)(iii) of the Policy the Complainant must prove that the Domain Name has been registered and is being used in bad faith. Paragraph 4(b) lists four circumstances that, without limitation, may be evidence of the registration and use of a Domain Name in bad faith. Especially pertinent to the present case is circumstance (iv), 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

6.7. According to the Complainant’s evidence, the Respondent’s choice of Domain Name is designed to trap users who legitimately seek the trademark PORSCHE. Furthermore, on the top left side of each page within Respondent’s web site there appears an ornamental logo comprising a prominent letter “P” incorporating the name “Porsche.” Screen prints of Respondent’s web site provided by Complainant show that various subsections or pages are designated Porsche #1, Porsche #2, up to Porsche #5. The Panel finds the totality of this conduct likely to create confusion with the Complainant’s trademark, to imply Complainant’s sponsorship, affiliation, or endorsement of products promoted on the Respondent’s web site, and clearly to be within the scope of Paragraph 4(b)(iv) of the Policy.

6.8. The Complainant’s trademark PORSCHE as appropriated by the Respondent has a strong reputation and is recognised internationally. The Panel finds it implausible that Respondent was unaware of Complainant’s trademark. Neither the Complainant nor its trademark has any conceivable connection with Respondent’s name or activities. The registration of a well-known trademark of which the Respondent must reasonably have been aware constitutes bad faith (Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163). Respondent’s failure to acknowledge or reply to Complainant’s cease and desist letter, sent three months before the Commencement of Proceedings, compounds the bad faith (Ebay, Inc. v. Ebay4sex.com and Tony Caranci, WIPO Case No. D2000-1632). The Panel finds bad faith registration and use proven in the general terms of Paragraph 4(a)(iii) of the Policy.

6.9. In summary, as concluded in 6.3 above the disputed Domain Name is confusingly similar to the Complainant’s trademark in the terms of Paragraph 4(a)(i) of the Policy. As concluded in 6.5 above, the Respondent has no rights or legitimate interests in the Domain Name in the terms of Paragraph 4(a)(ii) of the Policy. As concluded in 6.7 and 6.8 above, the Respondent has registered and is using the Domain Name in bad faith in the terms of Paragraph 4(a)(iii) of the Policy. The Complainant has proven all necessary elements required by Paragraph 4(a) of the Policy and accordingly the Administrative Panel decides for the Complainant.

7. Decision

The Decision of the Administrative Panel is that the disputed Domain Name <porsche-me.com> is confusingly similar to the trademark PORSCHE in which the Complainant has rights; that the Respondent has no rights or legitimate interests in the Domain Name; and that the Respondent has registered and is using the Domain Name in bad faith. 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 <porsche-me.com> be transferred to the Complainant.

Dr. Clive N.A. Trotman
Sole Panelist

Dated: August 24, 2004