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Dr. Ing. h.c. F. Porsche AG v. Kentech, Inc. a.k.a. Helois Lab a.k.a. Orion Web a.k.a. Titan Net a.k.a. Panda Ventures a.k.a. Spiral Matrix and Domain Purchase, NOLDC, Inc. [2005] GENDND 1768 (24 October 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Dr. Ing. h.c. F. Porsche AG v. Kentech, Inc. a.k.a. Helois Lab a.k.a. Orion Web a.k.a. Titan Net a.k.a. Panda Ventures a.k.a. Spiral Matrix and Domain Purchase, NOLDC, Inc.

Case No. D2005-0890

1. The Parties

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

The Respondents are Kentech, Inc. a.k.a. Helois Lab a.k.a. Orion Web a.k.a. Titan Net a.k.a. Panda Ventures a.k.a. Spiral Matrix with a P.O. Box in Eldoret, Kenya (“First Respondent”) and Domain Purchase, NOLDC, Inc., of New Orleans, Louisiana, United States of America. (“Second Respondent”).

2. The Domain Names and Registrars

The disputed domain names and registrars are as follows:

1.	<boxster-club.com>	Intercosmos Media Group d/b/a directNIC.com
2.	<brannenracing911.com>	Intercosmos Media Group d/b/a directNIC.com
3.	<electricporsche.com>	Intercosmos Media Group d/b/a directNIC.com
4.	<my996.com>	Intercosmos Media Group d/b/a directNIC.com
5.	<parkporscheaudi.com>	Domain Contender, LLC
6.	<pelicanporsche.com>	Intercosmos Media Group d/b/a directNIC.com
7.	<porscheaddict.com>	Intercosmos Media Group d/b/a directNIC.com
8.	<porschecarrentals.com>	Intercosmos Media Group d/b/a directNIC.com
9.	<porschecartransport.com>	Domain Contender, LLC
10.	<porscheclubtenerife.com>	Intercosmos Media Group d/b/a directNIC.com
11.	<porschehipster.com>	Domain Contender, LLC
12.	<porschekorea.net>	Intercosmos Media Group d/b/a directNIC.com
13.	<porschepr.com>	Intercosmos Media Group d/b/a directNIC.com
14.	<porsche-racers.com>	Domain Contender, LLC
15.	<porsche-repair-parts.com>	Domain Contender, LLC
16.	<porsches.net>	Intercosmos Media Group d/b/a directNIC.com
17.	<porschetakeoffwheels.com>	Domain Contender, LLC
18.	<porsche911magazine.com>	Domain Contender, LLC
19.	<porsche-928s4.com>	Intercosmos Media Group d/b/a directNIC.com
20.	<reeves-porsche.com>	Intercosmos Media Group d/b/a directNIC.com
21.	<team911racing.com>	Intercosmos Media Group d/b/a directNIC.com
22.	<911fans.com>	Domain Contender, LLC.

The above numbers will be used to refer to the disputed domain names where convenient.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 19, 2005. On August 19, 2005, the Center transmitted by email to the registrars listed above requests for registrar verification in connection with the domain names at issue. On August 19, 2005, those registrars transmitted by email to the Center their verification responses confirming that the Respondents were listed as the registrants and providing the contact details for the administrative, billing, and technical contacts. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September 6, 2005. 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 Respondent of the Complaint, and the proceedings commenced on September 6, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was September 26, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 28, 2005.

The Center appointed Adam Taylor as the sole panelist in this matter on October 10, 2005. 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

The Complainant is well known manufacturer of sports cars. It has undertaken this business for over 50 years. Its cars are distributed worldwide through a network of official dealers. The Complainant also manufactures spare parts for its cars as well as producing merchandise such as glasses, umbrellas, and clothing. The Complainant’s main website is at “www.porsche.com”.

The Complainant’s best known car is the 911 model. Major improvements to that car justified their own version numbers. So, for example, the Porsche 996 is the version of the Porsche 911 Carrera sold from 1998 (as a 1999 model) to 2005. The Porsche Boxster is a convertible sportscar released in late 1996 and is still being produced today.

The Complainant has a range of registered trademarks for PORSCHE, 911, 996 and BOXSTER including the following:

PORSCHE:

- German Trademark No. 643 195 for PORSCHE, registered August 26, 1953 (cars and their parts)

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

- International Registration No. 179928 for PORSCHE registered October 10, 1954 (cars and their parts)

- International Registration No. 459706 for PORSCHE registered February 24, 1981 (car related services)

- International Registration No. 473561 for PORSCHE registered September 29, 1982 (various goods and services including consumer products and merchandising)

- Community Trademark No. 73098 for PORSCHE, filed April 1, 1996 (various goods and services).

BOXSTER:

- German Trademark No. 2034385 for BOXSTER registered April 13, 1993 (cars and their parts)

- US Trademark No. 2154427 for BOXSTER, filed May 8, 1995 (various goods and services);

- International Registration No. 604881 for BOXSTER, registered. June 11, 1993 (cars and their parts)

911:

- US Trademark No. 2414167 for 911 filed February 14, 2000 (cars and their parts)

- Community Trademark No. 21089 for 911 filed April 1, 1996 (cars and their parts)

- German Trademark No. 39601333.3 for 911 registered June 13, 1996 (cars and their parts).

996:

- German Trademark No. 39702063 for 996, registered March 3, 1997 (cars and their parts)

The disputed domain names were registered on various dates during 2004 and 2005.

As of February 16, 2005, domain names 1, 2, 4, 5, 8, 10, 12-14, 16, 18, 20-22 were registered in the name of either “Kentech, Inc.” or “Kentech Company Ltd”, all showing the same address in Eldoret, Kenya, the same telephone number and the same email address ([e-mail]@@kenyatech.com).

On February 21, 2005, the Complainant sent a cease and desist email to

[e-mail]@kenyatech.com in respect of those 14 domain names.

As of August 13, 2005, all of the disputed domain names resolved to websites with a uniform design consisting of a search bar branded “Web Search” and a list of links based on the content of the domain name. Many of those links referred to the Complainant and/or the model names of its cars. Other links related to different car manufacturers such as Volvo, Ferrari, BMW and Subaru. A logo stating “Buy This Domain! Find Out How. Click Here!” appeared on the top right hand corner of each site. Each site included the copyright notice “© 2004 Kentech, Inc. All rights reserved.”

As of August 13, 2005, domain names 3 and 5-20 were included on a website “www.kenyatech.com” with “Make Offer” links adjacent to each listing. The site was branded “Kentech”. The proprietor of the site was named as “Kentech Company Ltd.” with the same address and phone number as were shown on the February 16, 2005, whois printouts. The site said that Kentech, founded in 2004, was the “leading online marketplace for buying domain names and websites” and “the largest African domain name services provider”. Kentech’s mission was stated to be the offering of “the largest selection of aftermarket domain names in the world”. The copyright notice on the site stated “Copyright © 2004 Kentech, Inc”.

The Complainant has produced a printout from a website at “www.noldc.com” as of August 13, 2005. This included the following statement: “Our Alternative Identity service located at “www.alternativeidentity.com” is a way to offer identity concealment to everyday customers interested in keeping their information secret from possible SPAM senders, hackers, and other sinister individuals.” The site also stated “We supply Organizational Contacts, Administrative Contacts, Technical Contacts, and/or Billing Contacts for telephone, mail and email for the WHOIS database”. The site at “www.noldc.com” is branded “NOLDC Inc” and the contact address is the same New Orleans address as that shown for the Second Respondent in the August 19, 2005, whois printouts mentioned below.

According to whois printouts as of August 19, 2005, the registrants of the disputed domains are as follows:

2,7,8,12,19,21	Helois Lab
4	Orion Web
6	Spiral Matrix
3	Panda Ventures
20	Titan
1,10,13,16	NOLDC, Inc
5,9,11,14,15,17,18,22	Kentech, Inc

Apart from NOLDC, Inc., all of these registrants share the same address, telephone number and email address shown on the February 16, 2005, whois printouts mentioned above. The address for NOLDC, Inc is New Orleans, United States of America with a different telephone number and email address.

On October 11, 2005, NOLDC, Inc. emailed the Center stating that it had set up certain accounts “and would have all of the domains transferred into these accounts and into your name. You will then be free to transfer the domains to the registrar of your choice or keep them where they are.”

Both Respondents have been ordered to transfer domain names in a number of other cases:

First Respondent: Bart van den Bergh Merk-Echt BV v. Kentech Company Ltd., WIPO Case No.  D2005-0127, Enterprise Rent-A-Car Company v. Kentech Company Ltd., NAF FA0503000445505, DaimlerChrysler Corporation v. Kentech, Inc., NAF FA0501000410056, Enterprise Rent-A-Car Company v. Kentech Company Ltd., NAF FA0501000406522.

Second Respondent: Accor v. Noldc Inc., WIPO Case No. D2005-0016, Dicota GmbH v. NOLDC, Inc., NAF FA0408000311365, MedaBiotics Laboratories, L.L.C. v. NOLDC, Inc., NAF FA0410000346252, WeddingChannel.com Inc. v. NOLDC, Inc. NAF FA0408000310971.

5. Parties’ Contentions

A. Complainant

Procedural

The First Respondent appears under different names but behind these names there is one legal entity. All domain names were formerly registered in the name of Kentech, Inc. Also the February 16, 2005, contact details are the same as are the design of, and copyright statement on, the websites.

The First Respondent is registrant of a multitude of domain names that are picked up when their former registrants allowed them to expire, whether intentionally or by mistake.

Following the Complainant’s cease and desist email, the First Respondent manipulated the whois records. The original registrant name “Kentech” was replaced in some cases by several alias names and for some of the disputed domain names the Second Respondent was retained to obscure ownership and to make it harder for the Complainant to enforce its trademarks.

The purpose of the Second Respondent is the obstruction of the ICANN whois system by providing its own identity as a disguise for cybersquatters who fear being targeted by trademark owners and other “sinister individuals”. The Second Respondent provides a false identity to the First Respondent who remains the beneficial owner of the domain names. The following facts support this: the expressed intention of the Second Respondent to serve as a disguise for domain name owners; the use of the domain names for the same “parking” websites as the ones owned by the First Respondent; the First Respondent offering those domain names for sale in exactly the same way as the others; the fact that the First Respondent was the registrant of those domain names as of February 2005; the fact that the whois changes took place only after the Complainant’s cease and desist letter to the First Respondent.

The First Respondent is the beneficial owner of the domain names for which the Second Respondent is shown as registrant. It has constantly been held by Administrative Panels that the beneficial owner may be named as Respondent.

The Second Respondent also qualifies as a Respondent with regard to the domain names registered in its name, despite the fact that its purpose is to shield a beneficial owner from being held responsible.

Even if the Second Respondent had acquired the domain names it would be appropriate to name it the Second Respondent in this case.

Finally, the Complaint is filed against both Respondents because it would be appropriate, given the circumstances and the shared interest of both Respondents in the domain names, to consolidate separately filed complaints into one case.

Identical or Confusingly Similar

The disputed domain names are confusingly similar to Complainant’s trademarks “Porsche”, “Boxster”, “911” or “996”.

Suffixes like “.com”, descriptive elements or names do nothing to distinguish the disputed domain names from the trademarks. They underline the impression that these domain names belong to a website operated by the Complainant.

With regard to <parkporscheaudi.com>, for which the Complainant seeks cancellation, there is confusing similarity, even though Complainant’s trademark is associated with the trade name and trademark of a third party which is not a party in the present procedure.

Rights or Legitimate Interests

The Respondents are not authorised dealers in the Complainant’s products and there is no business relationship between the parties.

The Respondents do not use the domain names in connection with a bona fide offering of goods or services.

The Respondents are not commonly known by the domain names and they are not making non commercial or fair use of the disputed domain names. Rather they are using them for commercial purposes, namely sponsored links.

The multiple registrations of domain names resolving to the same website and the advertising for other brands (such as Volvo and BMW) must be weighed against the Respondents.

Registered and Used in Bad Faith

The Respondents have registered and are using the disputed domain names in bad faith.

The multitude of registrations and the content of the websites (including Porsche-related links) leave no doubt that the Respondents were aware of the Complainant’s trademarks but nevertheless decided to register and use confusingly similar domain names.

Paragraph 4(b)(i) of the Policy: On each of the websites to which the disputed domain names redirect and on the website of Kentech, Inc. the domain names are offered for sale in a way that clearly expresses the intention to receive valuable consideration well above the registration costs. This is also confirmed by the First Respondent describing its business as a domain name dealer.

Paragraph 4(b)(ii) of the Policy: Having registered more than 20 domain names incorporating Complainant’s trademarks, both Respondents are engaged in a pattern of such conduct.

Paragraph 4(b)(ii) and (iii) of the Policy: The Respondents are seeking to divert as many potential Internet users as possible towards websites with sponsored links. Respondents are competing with Complainant for the attention of internet users which they hope to divert to their sites and to the third party sites competing with Complainant. This constitutes a pattern of conduct.

Paragraph 4(b)(iv) of the Policy: By using the disputed domain names, the Respondents intentionally attempt to attract internet users for commercial gain (through click through fees and offers to purchase domain names) to those websites and through sponsored links to websites of competitors.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Procedural Issues

The Panel notes that 18 of the 22 disputed domain names are registered either to Kentech, Inc (8) or to one of five other entities: Helois Lab (6) / Orion Web (1) / Spiral Matrix (1) / Panda Ventures (1) / Titan (1). As of August 13, 2005, all of those 18 domain names showed the same registrant address, telephone number and email address and all resolved to websites with identical layouts which named Kentech, Inc. as the copyright owner. On that date also at least seven of the domain names registered to the other five entities were offered for sale on “www.kenyatech.com”. At least six of the domain names owned by the five entities were previously registered to Kentech, Inc. or Kentech Company Ltd.

The Panel concludes from these facts, and from the lack of any objection to the assertions in the Complaint, that these 18 domain names are all controlled by the same entity and that some of these were switched into different names to obstruct the Complainant following its cease and desist email of February 21, 2005.

In these circumstances the Panel considers it appropriate that Helois Lab, Orion Web, Spiral Matrix, Panda Ventures and Titan be treated as aliases of, and interchangeably with, the First Respondent, Kentech, Inc.

Four of the disputed domain names are registered to NOLDC, Inc which is clearly a different legal entity to the First Respondent and whose contact details do not overlap with those of the other 18 domain names. However, on August 13, 2005, these four domain names resolved to similar websites to those outlined above and three were offered for sale on “www.kenyatech.com”. All four were previously registered to Kentech, Inc. or Kentech Company Ltd.

In the Panel’s view, these four domain names are controlled by the same entity that controls the other 18 disputed domain names and the four were transferred to the name of the Second Respondent as part of a campaign to hinder the Complainant. Whether or not the Second Respondent has been used as a proxy service, it was appropriate to join the Second Respondent as Respondent in respect of the four domain names for which it is the registrant.

Notwithstanding the email from the Second Respondent to the Center dated October 11, 2005, offering to transfer unspecified domain names, the Panel has not been notified of any settlement in accordance with paragraph 17(a) of the Rules and has therefore proceeded with this decision. While the Panel has discretion to admit this email, it does not propose to do so as both its content and the circumstances in which it was sent are unclear.

Substantive Issues

A. Identical or Confusingly Similar

As stated above, the Complainant has registered trademarks for PORSCHE, BOXSTER, 991 and 996.

Apart from domain names 2, 5 and 20, each of the disputed domain names comprises one or more of these four trademarks plus one or more generic / descriptive terms or, in the case of domain name 16, the additional letter “s” (<porsches.net>). The trademarks are the dominant part of each domain name and the additional words or text fail to dispel the connection between the relevant trademark and domain name.

Domain names 2 (<brannenracing911.com>), 5 (<parkporscheaudi.com >) and 20 (<reeves-porsche.com>) are in a different category as each appears also to include the name or and/or trademark of a third person which is not a party to this case. In the Panel’s view, however, the evocation of the Complainant’s trademarks – even in conjunction with other trademarks – still creates an association with the Complainant and is therefore confusing to the public.

It is well established that domain suffixes are disregarded for the purpose of this comparison.

The Panel concludes that the disputed domain names are confusingly similar to trademarks in which the Complainant has rights.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides examples of circumstances that can demonstrate the existence of rights or legitimate interests in a domain name: (i) use of, or preparations to use, a domain name in connection with a bona fide offering of goods or services; (ii) the fact that a respondent has commonly been known by a domain name; and (iii) legitimate non-commercial or fair use of a domain name, without intent for commercial gain to mislead consumers or tarnish the trademark.

The Complainant must establish at least a prima facie case under this heading and, if that is made out, the evidential onus shifts to the Respondents to rebut the presumption of absence of rights or legitimate interests (See, eg, Atlas Copco Aktiebolag v. Accurate Air Engineering, Inc., WIPO Case No. D2003-0070).

As to paragraph 4(c)(i), the Respondents have used the disputed domain names in connection with an offering of services. However the Complainant has not licensed or otherwise authorized the Respondents to use its trademarks. Neither Respondent has submitted a response to deny the Complainant’s assertions concerning the inappropriate nature of the Respondents’ use of its trademarks nor have they provided any explanation for incorporating the Complainant’s trademarks in the disputed domain names. Indeed, the Panel has concluded below that the Respondents used the disputed domain names to profit by creating a likelihood of confusion with the Complainant’s trademarks. In these circumstances the Respondent’s offering could not be said to be bona fide.

There is no evidence that paragraphs 4(c)(ii) or (iii) apply.

The Complainant has established a prima facie case of lack of rights and legitimate interests and there is no rebuttal by the Respondents.

The Panel concludes that the Respondents have no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The Panel is of the view that the Respondents intentionally attracted for commercial gain internet users to their websites by trading on the goodwill associated with the Complainant’s trademarks and creating a likelihood of confusion with the trademarks as to the source, sponsorship affiliation or endorsement of Respondent’s websites and of the services offered on the site (paragraph 4(b)(iv) of the Policy). It is reasonable to infer that the purpose of the Respondents’ websites was to generate commercial gain by means of paid for links which included links to the Complainant’s competitors.

The Panel also takes into account the evasive actions of the controller of the disputed domain names when confronted by the Complainant – explained above – and the fact that both Respondents were held to have acted in bad faith in a number of previous cases.

The Panel concludes that the disputed domain names were registered and have been used in bad faith.

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 <boxster-club.com>, <electricporsche.com>, <my996.com>, <pelicanporsche.com>, <porscheaddict.com>, <porschecarrentals.com>, <porschecartransport.com>, <porscheclubtenerife.com>, <porschehipster.com>, <porschekorea.net>, <porschepr.com>, <porsche-racers.com>, <porsche-repair-parts.com>, <porsches.net>, <porschetakeoffwheels.com>, <porsche911magazine.com>, <porsche-928s4.com>, <team911racing.com>, <911fans.com> be transferred to the Complainant and that the domain names <brannenracing911.com>, <parkporscheaudi.com> and <reeves-porsche.com> be cancelled as the said three domain names include the trademarks of a third party.

Adam Taylor
Sole Panelist

Dated: October 24, 2005