WIPO Domain Name Decision: D2004-0982

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Dr. Ing. h.c.F. Porsche AG v. Hakan Melek

Case No. D2004-0982

1. The Parties

The Complainant is Dr. Ing h.c.F. Porsche AG of Stuttgart, Germany.

The Respondent is Hakan Melek of Istanbul, Turkey.

2. The Domain Names and Registrar

The disputed domain names <porscheturkiye.com> and <porschepenta.com> (the “Domain Names”) are registered with iHoldings.com Inc., Inc., d/b/a DotRegistrar.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 23, 2004. On November 23, 2004, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On November 23, 2004, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing registrant contact details for Respondent. 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 December 2, 2004. In accordance with the Rules, paragraph 5, the due date for a response was December 22, 2004. The Respondent filed a Response with the Center on December 21, 2004.

The Center appointed Maxim H. Waldbaum as the sole panelist in this matter on January 12, 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 engaged in the manufacture of sports cars, car parts, and a variety of merchandising items sold under trademarks consisting of or incorporating the name “Porsche”.

Respondent registered the Domain Names on October 7, 2003.

5. Parties’ Contentions

A. Complainant

Complainant contends that:

- For over fifty years it has been a manufacturer of sports cars with a global reputation. Additionally, it manufactures spare auto parts, car parts meant to enhance the appearance and performance of its sports cars, and various merchandising items such as glasses, umbrellas and clothing;

- Complainant owns numerous trademarks consisting of or incorporating the name “Porsche” and the name “Porsche” is protected by International Trademark Registrations under the Madrid Protocol;

- Complainant operates its main website at “www.porsche.com”;

- Respondent is a dealer of various car related products, but is not an official dealer of Porsche cars or products;

- The disputed Domain Names both redirect automatically to www.pentaoto.com, which prominently displays Respondent’s trade name on its entry and succeeding pages, and are thus used to trap unsuspecting Internet users who are seeking information from and about Complainant’s products;

- The domain name <porscheturkiye.com> combines Complainant’s mark with the Turkish word for the country Turkey and thereby creates the false impression that it directs the Internet user to the official website of Complainant in Turkey. The domain name <porschepenta.com> combines Complainant’s mark with Respondent’s trade name and thereby creates the false impression that Respondent is an authorized dealer of Complainant’s products or that the parties are engaged in a joint venture; and

- The Domain Names are confusingly similar to Complainant’s mark, Respondent has no right or legitimate interests in the Domain Names, and Respondent has registered and used the Domain Names in bad faith.

Complainant requests that the Domain Names be transferred to Complainant.

B. Respondent

Respondent contends that:

- It is the owner of a company operating in compliance with the laws of Turkey and dealing in the sale of first and second hand cars of various manufacturers and related products. It prides itself on being one of the top automotive re-manufacturers of major first class cars in Turkey, and such is a legal business taking its lawful base from its customers’ legal rights to make modifications to their possessions;

- The Domain Names are not identical or confusingly similar to Complainant’s mark because both include aspects that Complainant’s mark does not contain;

- It has legitimate interest in the Domain Names because they are related to its legal business concerns and its use of the Domain Names is thus a legitimate and fair use under the Policy; and

- It has not registered or used the Domain Names in bad faith in that Respondent: imports Complainant’s products from a duly authorized dealer of Complainant; has not registered the Domain Names primarily to sell or rent such names to Complainant or its competitors or to disrupt Complainant’s business; does not attempt to corner the market of all potential domain names in order to deprive Complainant of a domain name reflecting its own mark; has chosen the Domain Names because they were the most appropriate to relate Respondent’s field of business to consumers; uses the Domain Names in connection with a bone fide offering of goods and services; is actually offering the goods and services displayed on its website; does not sell any products that could compete with products of Complainant; and discloses through its website its actual relationship to Complainant.

Respondent requests that the Complaint in this matter be denied.

6. Discussion and Findings

According to Paragraph 4(a) of the Policy, the Complainant must prove that:

(i) The domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the domain names; and

(iii) The domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

To satisfy this element, Complainant must establish it has rights to a trade or service mark, and that the disputed domain names are identical or confusingly similar to such marks. See Policy, paragraph 4(a)(i). Under the Policy, the test of confusing similarity is “confined to a consideration of the disputed domain name and the trademark.” America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004 (February 22, 2001).

Complainant has shown that, since the early 1950’s, it has owned multiple registrations throughout the world for trademarks consisting of or incorporating the name “Porsche”, including such registrations in Germany, Canada, and the United States. The name and mark are famous and are identifiable with Complainant.

The Domain Names at issue incorporate Complainant’s mark in its entirety. Respondent argues that the Domain Names are not identical or confusingly similar because they include distinctive phrases which Complainant’s mark does not contain. However, “the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks.” Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (November 6, 2001). Moreover, Respondent’s use of the mark does nothing to detract from such confusing similarity: i.e., the addition of the name of a particular country (Turkiye), or the addition of Respondent’s company name, only enhances such confusion by encouraging the perception that Respondent’s website is the official cite of Complainant in Turkey, or that Respondent’s site is authorized and/or sponsored by Complainant.

The Panel thus finds the Domain Names to be confusingly similar to Complainant’s mark, and that Complainant has satisfied its burden of proof under Paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interest

B.1 Applicable Standard

To satisfy this element, Complainant must establish that Respondent has no rights or legitimate interests in respect of the Domain Names.

Although the ultimate burden of proof on this element is on the Complainant, previous panels have recognized that this burden is a shifting one, and that once a complainant has made a prima facie showing in this regard, the burden is then on respondent to rebut such showing. See John Swire & Sons Limited v. David Huang, WIPO Case No. D2000-1106 (December 5, 2000); Cimcities, LLC v. John Zuccarini D/B/A/ Cupcake Patrol, WIPO Case No. D2001-0491 (May 31, 2001). Indeed, despite placing the ultimate burden squarely on the complainant, the Policy provides a non-exhaustive list of circumstances which “if found by the Panel to be proved. . . shall demonstrate [a respondent’s] rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii).” Policy, Paragraph 4(c).

Tracking the circumstances listed in Paragraph 4(c) of the Policy, Complainant in the instant matter argues that:

(i) Respondent does not use the Domain Names in connection with a bona fide offering of goods and services;

(ii) Respondent is not commonly known by the Domain Names; and

(iii) Respondent is not making a non-commercial or fair use of the Domain Names without intent for commercial gain to misleadingly divert consumers or to tarnish the mark at issue.

The Panel holds that, under the Policy and consistent with the decisions of previous panels, Complainant’s establishment of the above listed factors is a sufficient prima facie showing that Respondent lacks rights or legitimate interests in the Domain Names, and thus shifts the burden onto Respondent to rebut such showing.

B.2 Discussion

(i) Respondent Does Not Use the Domain Names in Connection with a Bona Fide Offering of Goods and Services

With respect to the first factor, previous panels have held that “[u]se which intentionally trades on the fame of another cannot constitute a ‘bona fide’ offering of goods or services. To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy.” Madonna Ciccone, p/k/a/ Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847 (October 12, 2000); see also America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004 (February 22, 2001).

Here, the Domain Names incorporate Complainant’s internationally renowned mark in a manner likely to create the misperception that Respondent is the owner of the mark (<porscheturkiye.com>), or that Respondent’s business activities are affirmatively authorized and/or sponsored by Complainant (<porschepenta.com>). Moreover, both Domain Names resolve to the website of Respondent’s company at “www.pentaoto.com”. Thus, the wide recognition of Complainant’s mark, together with the manner in which that mark is incorporated into the Domain Names and the fact that the Domain Names redirect Internet users to Respondent’s website, are sufficient to establish that Respondent is intentionally trading on the fame of the PORSCHE mark and that its use of the mark cannot be deemed to be in connection with a bona fide offering of goods or services.

The Panel thus holds that Complainant has made a sufficient showing that Respondent’s use of the Domain Names is not in connection with a bona fide offering of goods or services.

(ii) Respondent is Not Commonly Known by the Domain Names

That Respondent is not commonly known by the Domain Names is sufficiently established by the content of Respondent’s website and by Respondent’s other advertising. As noted supra, both Domain Names resolve to the website of Respondent’s company at “www.pentaoto.com”. Such website prominently displays Respondent’s “Penta” mark on the entry page as well as on the upper left hand corner of succeeding pages. Moreover, Respondent’s own exhibits include advertisements identifying the name of its company as “Penta Oto”. Other than redirecting an Internet user to Respondent’s Penta Oto website, there is no evidence showing the Domain Names appearing in any manner in connection with Respondent. That Respondent’s website and advertising establish that it is commonly known as Penta Oto is sufficient, absent the presence of contradictory evidence, to establish that Respondent is not commonly known as either “porscheturkiye” or “porschepenta”.

The Panel thus holds that Complainant has made a sufficient showing that Respondent is not commonly known by the Domain Names.

(iii) Respondent is Not Making a Noncommercial or Fair Use of the Domain Names Without Intent to Misleadingly Divert Consumers for Commercial Gain

By intentionally trading on the fame of the PORSCHE mark Respondent is using the Domain Names with the intent to commercially benefit by “misleadingly divert[ing] consumers” to its website. Policy, paragraph 4(c)(iii). As found supra, the Domain Names incorporate Complainant’s mark in a manner that tends to mislead consumers into believing that Respondent is the owner of the mark and/or that the business offerings on Respondent’s website are affirmatively authorized and/or sponsored by Complainant. Such use evidences an intentional attempt to misleadingly divert consumers to Respondent’s website for commercial gain and therefore cannot be a legitimate non-commercial or fair use under Paragraph 4(c)(iii) of the Policy. The Panel thus holds that Complainant has made a sufficient showing that Respondent is not making a non-commercial or fair use of the Domain Names without intent of misleadingly diverting consumers to its website for commercial gain.

Accordingly, the Panel holds that by virtue of (i) through (iii) above Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the Domain Names, and that the burden therefore shifts to Respondent to rebut such showing.

Respondent’s Failure to Rebut Complainant’s Prima Facie Showing

In its Response in the instant matter, Respondent argues: (a) that it is engaged in a legal business enterprise; (b) that the Domain Names are related to such business; (c) that it actually sells Complainant’s products on its website; (d) that no products on its website could be a substitute for Complainant’s products; (e) that it never expressly claims on its website to be the official dealer of Porsche cars in Turkey; and (f) that the content of its website gives clear understanding as to the actual relationship between the parties. Under the facts of the instant matter, however, such arguments are insufficient to rebut Complainant’s showing that Respondent lacks right or legitimate interests in the Domain Names.

That Respondent’s activities may otherwise be deemed to constitute a legal business enterprise does not immunize Respondent from an adverse result under the Policy. The fact that Respondent’s activities considered apart from the Domain Names may not be illegal or otherwise inappropriate does not alter the fact that its use of the Domain Names intentionally usurps the goodwill of Complainant’s mark and intentionally misleads consumers regarding Respondent’s relationship with Complainant. Such use of another’s mark in a manner intended to mislead the consumer as to sponsorship or affiliation in itself establishes that an offering thus made is not made in good faith and without fraud or deceit; i.e., that an offering thus made is not bona fide but is, rather, deceitful and misleading to the offeree as well as potentially harmful to Complainant. Under such circumstances, Respondent’s offering of goods or services cannot be deemed bona fide under Paragraph 4(c)(i) of the Policy.

Moreover, Respondent’s reliance upon Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (November 6, 2001), in this regard is misplaced. In Oki Data, the panel’s findings were grounded in the fact that respondent was an authorized Oki Data dealer, was listed as such on complainant’s website, and had been granted access by complainant to password protected “web-art”, including the OKIDATA trademark, for use on respondent’s website. Respondent here is not now and never has been a licensee of Complainant nor is it otherwise authorized to use the PORSCHE mark. Thus, with respect to the finding of a bona fide offering of goods and services, the Oki Data decision has no application to the instant matter.

Finally, assuming arguendo that Respondent actually sells Complainant’s products and that Respondent does not sell any products that could substitute for those of Complainant, such assumption does nothing to undermine the finding that the offering on Respondent’s website is not a bona fide offering under Paragraph 4(c)(i) of the Policy. Despite Respondent’s contentions to the contrary (Respondent’s arguments (e) and (f) above), nothing in the Domain Names or in the content of the website has been shown to expressly or impliedly disclaim the misleading nature of Respondent’s incorporation of the Porsche mark into the Domain Names. Even assuming that Respondent is selling authentic PORSCHE products, use of the Domain Names to mislead consumers as to Complainant’s sponsorship or affiliation with Respondent’s business is enough to render the offerings thus made by Respondent as deceitful and not in good faith. Such offerings are not bona fide offerings of goods or services under the Policy.

The Panel accordingly finds that Complainant has established that Respondent has no rights or legitimate interests in respect of the Domain Names and has satisfied its burden of proof under Paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Under Paragraph 4(b)(iv) of the Policy, registration and use in bad faith is properly evidenced by use that “intentionally attempted to attract, for commercial gain, Internet users to [a respondent’s] website [] by creating a likelihood of confusion with the complainant’s mark as to source, sponsorship, affiliation, or endorsement of [respondent’s] website [] or of a product or service.” Policy, paragraph 4(b)(iv). Such “initial interest confusion,” occurring at the point where a consumer is attracted to a website and regardless of whether such confusion is alleviated at some point thereafter, coincides precisely with the actions outlined supra with respect to Respondent’s misleadingly diverting consumers to its website and intentionally trading on the fame of the PORSCHE mark through its use of the Domain Names. Moreover, the international association of the PORSCHE mark with Complainant in the minds of consumers had existed for decades prior to Respondent’s registration of the Domain Names and, given the Respondent’s area of business, was undoubtedly known to Respondent at the time of registration. Respondent’s bad faith registration and use under Paragraph 4(a)(iii) has thus been established.

Respondent’s relevant arguments against a finding of bad faith registration and use lie chiefly in its assertions that it meets the criteria for establishing a bona fide offering of goods or services under Paragraph 4(c)(i) of the Policy, and that it lacked any intention to create consumer confusion. Respondent’s assertions with respect to the bona fide nature of its offering of goods and services in connection with the Domain Names have been found herein to be without merit. Moreover, as discussed supra, the requisite intent for a finding that Respondent intentionally attempted to attract or divert consumers to its website by creating confusion as to sponsorship or affiliation is properly inferred from the facts of the instant matter.

The Panel accordingly finds that Complainant has established Respondent’s bad faith registration and use of the Domain Names and has thus satisfied its burden of proof under Paragraph 4(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with Paragraph 4(i) of the Policy and Paragraph 15 of the Rules, the Panel orders that the domain names <porscheturkiye.com> and <porschepenta.com> be transferred to the Complainant.

Maxim H. Waldbaum
Sole Panelist

Dated: January 26, 2005