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Dr. Ing. h.c. F. Porsche AG v. Lorna Kang [2004] GENDND 704 (23 June 2004)

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

The Respondent is Lorna Kang, Perak, Malaysia.

2. The Domain Name and Registrar

The disputed domain name <porscheusa.com> is registered with iHoldings.com Inc. d/b/a DotRegistrar.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 5, 2004. On May 5, 2004, the Center transmitted by email to iHoldings.com Inc. d/b/a DotRegistrar.com a request for registrar verification in connection with the domain name at issue. On May 5, 2004, iHoldings.com Inc. d/b/a DotRegistrar.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 and that the language of the registration agreement was English.

On May 12, 2004, 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 by email, on May 12, 2004. The Complaint was also notified via air-courier which however was undeliverable as the address indicated in the contact details of the domain name registration was incorrect. In accordance with the Rules, paragraph 5(a), the due date for Response was June 1, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 7, 2004.

The Center appointed Fabio Angelini as the Sole Panelist in this matter on June 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. The procedural language is English, such language being the language of the registration agreement pertaining to the domain name at issue.

4. Factual Background

The following facts and statements appear from the Complaint and the attached documents, all of which have not been contested by Respondent:

Complainant, Dr. Ing. h.c. F. Porsche AG, is a well-known manufacturer of high performance sports cars. Its activity spans for more than half a century. Its cars are sold and marketed all over the world, Malaysia included as shown in its website indicated in the Complaint. Complainant is the registered owner of numerous trademarks consisting of or incorporating the word PORSCHE. For the purpose of this Complaint the most relevant is certainly:

- Malaysia registration of PORSCHE, registration No. 92005283 of July 31, 1992, and renewed until 2009 for motor vehicles, parts and fittings thereof.

Complainant is also the holder of a large number of other registrations worldwide.

The disputed Domain Name <porscheusa.com> was registered by Respondent on November 22, 2001, but Complainant did not know about it until, on November 11, 2003, when Complainant’s webmaster received an e-mail in bad German which was apparently computer generated and which stated:

“Michael Ionescu, Die Internet-Web site Adresse www.porscheusa.com ist f|r Erwerb bei $500.000 vorhanden. W|rde Ihre Firma interessiert sein, an, von von www.porscheusa.com f|r Ihren Markennamen und nordamerikanischen Kundenbestand zu kaufen? Bitte Antwort an Ihrer fr|hesten Bequemlichkeit. Danke. Herzlichst, Linda Jordan Dot Com Brokers, Inc.”

(In English:  Michael Ionescu, The Internet-Web site address www.porscheusa.com is available at a price of $500.000. Would your firm be interested in buying www.porscheusa.com for your trademark and North-american clientele? Answers please at your earliest convenience. Thank you. Sincerely, Linda Jordan Dot Com Brokers, Inc.)

Further searches on the domain name at issue revealed that the domain name holder (Respondent) was a known “prolific cyber squatter,” and more than 15 cases had already been lodged against it and they all had resulted in the transfer of the domain names involved.

According to Complainant, Respondent’s business is the large scale registration of domain names that are confusingly similar to well-known trade names or trademarks. These domain names were and are used for “mousetrapping” users who believe they can find genuine information from the various trademark owners indicated by these domain names. The Complaint also indicates that the user who wished to enter the website located at the contested domain name is automatically redirected to “www.ownbox.com/treasure/auto.html” where price quotes from car dealers of cars of all makes are offered. The website is purportedly operated by “Price-autos.com.” At “www.price-autos.com/” the very same website is available. Another entity mentioned there is a certain “Dealix Corporation.” The business concept is described within the website: “Once you’ve supplied your contact information, the Dealix SmartMatch System will instantly match you with the optimal buying process for your location where a local dealer will contact you within 24 - 48 hours with a no-obligation firm price quote.”

According to Complainant’s belief and understanding, Respondent is receiving revenues for redirecting users to this website. In addition, when the user tries to close the website a pop-up window emerges that redirects the user to another car related advertising website, another familiar technique used by cybersquatters for maximum profit. According to Complainant, neither Respondent nor “Price-autos.com” or “Dealix” or whoever might be the person or legal entity in the background has ever been authorized or licensed by the Complainant to utilize the Complainant’s trade name or trademark. There has never been a business relationship of any kind between Complainant and these persons or entities are no official dealers of Porsche-cars or related products.

5. Parties’ Contentions

A. Complainant

Complainant contends that:

- the domain name <porscheusa.com> is confusingly similar to the trademark PORSCHE in which the Complainant has rights; and

- the Respondent has no rights or legitimate interests in respect of the Domain Name; and

- the Domain Name was registered and is being used in bad faith; and

- the domain name <porscheusa.com> should be transferred to the Complainant.

B. Respondent

As mentioned above, Respondent has been notified in accordance with paragraph 2(a) of the Rules, but failed to submit a response in accordance with the requirements under the Policy. Thus, Complainant’s allegations are non contested and are prima facie valid.

6. Discussion and Findings

Paragraph 4(a) of the policy directs that the Complainant must prove each of the following:

“(i) that 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

(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name has been registered and is being used in bad faith.”

6(i) Identical or confusingly similar Domain Name: Policy, paragraph 4(a)(i)

According to Complainant, the domain name <porscheusa.com> is confusingly similar to the trademark PORSCHE. This Panel agrees.

The registered trademark PORSCHE is identical with the first and most relevant part of the disputed Domain Name <porscheusa.com>. It is true that the Domain Name contains the additional word “usa.” However, the word “usa” is the well-known geographical term and acronym of United States of America. Thus, “usa” may give the impression to Internet users that the domain name and website at issue are owned by the legitimate owner of the trademark PORSCHE, which is the name of vehicles commercialized world wide and in the USA too. Accordingly, the addition of the term “usa” might indicate an affiliate or sister company in the USA, created specifically to accommodate the needs and requests of such a market. Therefore, the addition of the term “usa” does not diminish, but rather increases the confusion.

Accordingly, the Panel holds that the Complainant has established element (i) of the Policy, paragraph 4(a).

6(ii) Respondent’s Rights or Legitimate Interests in the Domain Name: Policy, paragraph 4(a)(ii)

According to Complainant, the Respondent lacks rights or legitimate interests in the domain name <porscheusa.com>. This Panel agrees.

Respondent may establish its rights or legitimate interests in the Domain Name, according to paragraph 4(c) of the Policy, by showing, among other circumstances any of the following elements:

“(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

Because Respondent did not proffer any evidence or argument to defend itself, it is this Panel’s view that the Respondent cannot shield its activity behind any of these situations. Even if use of the domain name began earlier than a notice of the dispute was given to the Respondent, the technique of use and the evident fraudulent and deceitful practices shown in the Complaint makes it clear, in this Panel’s eyes, that such use was never in connection of a bona fide offering of goods or services.

Neither Respondent has provided any evidence of having been commonly known by the Domain Name, or to have ever acquired legitimate trademark or service mark rights. On the contrary, it is this Panel’s view that Respondent is making a non-legitimate commercial use of the Domain Name, with full intent for commercial gain by misleadingly divert consumers.

Since Respondent has not shown to have any legitimate rights or interests in the Domain name at issue the Panel finds that Complainant has fulfilled its burden of proof under paragraph 4(a)(ii) of the Policy.

6(iii) Domain Name Registered and Used in Bad Faith: Policy, paragraph 4(a)(iii)

According to Complainant, Respondent has registered and uses the disputed domain name in bad faith. This Panel agrees. From what alleged in the Complaint it seems that, of all the circumstances indicated in paragraph 4(b) which, if found to be present, are deemed to provide evidence of bad faith in registering and using the Domain Name, i.e.,

“(i) circumstances indicating that you [Respondent] have registered or you [Respondent] have acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant who is the owner of the trademark or service mark, or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Domain Name; or

(ii) you [Respondent] have registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding Domain Name, provided that you have engaged in a pattern of such conduct; or

(iii) you [Respondent] have registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Domain Name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website 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 website or location or of a product or service on your website or your location.”

at least two have been comprehensively argued in the Complaint:

(1) an offer for sale of the domain name for US$500,000, and

(2) the intentional attempt to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website.

While this Panel finds that from the evidence presented it does not seem proven that the offer for sale really originated by Respondent (the mail came from a certain Linda Jordan whose connection – if any at all - with Respondent is not established). Moreover, this Panel finds that there was intentional attempt to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website as shown by the cunning mechanism of functioning of the Respondent’s website.

This Panel further believes that, since Complainant’s trademark is known and reputed throughout the world, and in Malaysia too, and Respondent did not provide any explanation for a possible unawareness of Complainant’s rights on the name and trademark PORSCHE and its activity in the automotive sector, this lack of any exculpating circumstances indicates a willing full and bad faith registration of the domain name at issue, registration which was instrumental and pre-ordinate to the subsequent bad faith use.

Therefore, having established Respondent’s bad faith in both registration and use of the domain name at issue, this Panel finds that Complainant has fulfilled its burden of proof under 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, this Panel, having found that the Domain Name is confusingly similar with Complainant’s trademark, that Respondent has no rights or legitimate interests in respect of the Domain Name, and that Respondent’s Domain Name has been registered and is being used in bad faith, orders that the domain name <porscheusa.com> be transferred to the Complainant.

Fabio Angelini
Sole Panelist

Dated: June 23, 2004