porschetoy.com

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Dr. Ing. h. c. F. Porsche AG v. Christophe Becker

Case No: D2002-0935

Complainant is Dr. Ing. h. c. F. Porsche AG, Porscheplatz 1, DE-70435, Germany. Complainant’s authorised representative is Dr. Rolf Diekmann, Attorney-at-Law Lichtenstein, Körner & Partners, Heidehofstrasse 9, DE-70184, Stuttgart, Germany.

Respondent is Christophe Becker of Thionville, Moselle 67100 France.

The domain name at issue <porschetoy.com> is registered with TierraNet dba, DomainDiscover, 9573 Chesapeake Drive, 1^st floor, San Diego, CA 92123, United States (the "Registrar").

The World Intellectual Property Organization Arbitration and Mediation Center (the "Center") received a Complaint from Complainant in e-mail form on October 9, 2002, and in hardcopy form on October 11, 2002.

On October 10, 2002, the Center sent a Request for Registrar Verification to the Registrar and received such a Verification on October 11, 2002.

In the Verification, the Registrar confirmed that:

- it had received a copy of the Complaint, sent by Complainant’s representative on behalf of Complainant;

- the domain name <porschetoy.com> is registered with that Registrar;

- the Registrant for the domain name is "christophe becker";

- the contact information for all contacts;

- the Uniform Domain Name Resolution Policy (the "Policy") applies to the domain at issue;

- Registrar had administratively locked the domain which will remain locked until further notification from WIPO;

- the domain name registration agreement is in English, and;

- according to the Domain Registration Agreement, for the adjudication of disputes concerning or arising from use of the Domain, Customer shall submit, without prejudice to potentially applicable jurisdictions, to the jurisdiction of the courts (1) of Customer’s domicile, and (2) San Diego County, California.

Having verified that the Complaint satisfied the formal requirements under the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") and the WIPO Supplemental Rules Uniform Domain Name Resolution Policy (the "Supplemental Rules"), the Center issued, on October 14, 2002, a Notification of Complaint and Commencement of Administrative Proceeding. That Notification was communicated to Respondent by post/courier (complaint with attachments) and by e-mail (complaint without attachments). The Notification was also sent by e-mail to Complainant, to the Registrar and to ICANN.

As no Response had been received from Respondent, the Center issued a Notification of Respondent Default on November 5, 2002, which was communicated to the Parties by e-mail.

The Center invited Mr. Henry Olsson to serve as Sole Panelist in the case and received, on November 11, 2002, Mr Olsson’s Statement of Acceptance and Declaration of Impartiality and Independence. The same day the Center appointed Mr. Olsson as Sole Panelist and issued a Notification of Appointment of Administrative Panel and Projected Decision Date which was duly communicated to the Parties. The Projected Decision Date was November 25, 2002.

The Sole Panelist considers that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the Supplemental Rules.

Complainant is a maker of sports cars for more than 50 years using the denomination "Porsche" as the prominent and distinctive part in its trade name, and this name appears on the back of every car and the Porsche shield is attached at the front of those cars. Porsche cars are sold world-wide through official dealers.

Nothing is known about Respondent’s activities in addition to what is contained in Complainant’s contentions which are referred to below.

In accordance with Paragraph 3(b)(xiii) of the Rules Complainant agrees to submit, only with respect to any challenge that may be made by Respondent to a decision by the Administrative Panel to transfer or cancel the domain that is the subject of this Complaint, to the jurisdiction of the courts where Respondent is located, as shown by the address.

Complainant first asserts that it is the owner of numerous trademarks consisting of, or incorporating, the word "Porsche". That trademark and the same trade name are known throughout the world and enjoy a high reputation. Complainant furthermore contends that "Porsche" is a registered trademark in almost any country of the world, primarily for cars and parts thereof but has been extended also to various other classes of products and services, such as toys and toy cars. To support its contentions in this respect, Complainant has submitted copies of documents on trademark registrations in Germany and the United States – which later registration covers also Class 28, i.e. toys and playthings – and of an international registration under the Madrid system and also of a European Trademark registration (both of which also cover Class 28). Complainant adds that toy cars are sold by Complainant on its various international and national websites, among them, one in France.

As far as Respondent is concerned, Complainant contends that Respondent is involved in the sex business, offering pornographic films and pictures for downloading over the Internet, and also sells sex-related items via mail order. According to Complainant, Respondent uses particularly aggressive and obtrusive techniques in order not to let the user get away, which techniques Complainant describes in some detail. The user gets tangled in various pornographic pop-up screens which are building up successively after the previous screen is closed; also, the user is subject to attempts to download a dialer program (see below) which is supposed to connect the unsuspecting user to an extremely costly Internet line.

Complainant furthermore asserts that the domain name at issue resolves to a website purportedly dedicated to toys, in particular toys for collectors. In addition to Porsche toys also other marks, for instance Mercedes, Volkswagen, Opel and Peugeot are sold. On the left hand side of the webpage, there are two links, one to "Toys for big boys" and one for "Babes N’ Cars Magazine." Both contain pornography-related material. Furthermore, the unsuspecting user gets confused by a great variety of pop-up screens and may inadvertently push the wrong button and thus downloads a so-called dialer program which is activated next time the user uses his normal telephone line so that he is linked to the connection that the program has selected, usually an unwanted and expensive Internet connection. Such programs are difficult to delete, something that requires advanced technological knowledge.

On September 20, 2002, Complainant sent via e-mail to Respondent a cease and desist letter – of which a copy has been submitted – which, however, was not replied to.

Complainant contends that the domain name at issue is confusingly similar to Complainant’s trademark and trade name "Porsche". According to Complainant, that mark and name are well known all over the world and integrated in its entirety in the domain name at issue. Complainant argues that the addition of ".com" and "toy" are descriptive and thus irrelevant. In summary, Complainant contends that an Internet user will believe that a website available under such a domain name is at least sponsored by, or affiliated to, the owner of the trademark which forms a component of the domain name.

Complainant contends that Respondent has no rights or legitimate interests in respect of the domain name, which was registered on June 16, 2002; there is neither a use nor a bona fide offering of goods or services under the domain name. According to Complainant, since the trade name and trade mark involved is well known and used for a long period of time, Respondent will have to bring evidence for its legitimate interest, as found in some earlier Panel decisions. Complainant suggests that Respondent has intentionally elected to capture users looking for information about Complainant or its products with the result that they are caught in the complicated pornographic window arrangements from which it is difficult to escape.

Complainant adds in this context that the reputation and value of the trademark "Porsche" is the result of Complainant’s achievements and Respondent is not in any position to legitimately exploit this value. Furthermore, according to Complainant, there is not and has never been any business relationship between the Parties, nor is Respondent commonly known by the domain name. Finally, Complainant adds that Respondent is not making any non-commercial use of the domain name but is rather offering pornographic content and Internet dealer connections for his own commercial benefit, as Respondent is likely to benefit from increased traffic resulting from the use of Complainant’s trademark and trade name.

Complainant first refers to earlier Panel decisions which have accepted as evidence of bad faith the fact that a domain name that incorporates a well known trademark is used for pornographic content. Complainant stresses that under no conceivable circumstances could Respondent have acted in good faith; Respondent has no legitimate interest in registering a domain name which closely resembles a well known and prestigious trademark and trade name even if Respondent were offering toy cars and not using this sales business as a mere cover for the pornographic content. Furthermore, the bad faith element is obvious also by the fact that Respondent sells not only Porsche replicas but all kinds of different makes, in particular Volkswagen. Complainant suggests that Respondent has chosen the name "Porsche" hoping that this will divert more users to its own website than if he has used another, probably less prestigious and well known name.

According to Complainant, Respondent was aware of Complainant’s trade name and trademark which for decades have been among the best known trademarks in the world, at least through offering of Porsche replicas for sale. Complainant suggests that the only reason for Respondent’s decision to make "Porsche" part of the domain name is a scheme to make profit by misleading users who seek information about Complainant and its products. Complainant considers this to be a situation covered by Paragraph 4(b)(iv) of the Policy.

In accordance with Paragraph 4(i) of the Policy and for the reasons which have been summarised above, Complainant requests the Panel to issue a decision that the contested domain name be transferred to Complainant.

Respondent, who was duly notified both by the Complainant and the various Notifications in this case, has not submitted any Response. Respondent is therefore in Default.

Paragraph 15 of the Rules prescribes that the Panel shall decide a Complaint on the basis of the statements made and documents submitted and in accordance with the Policy, the Rules and any principles of law that it deems applicable.

In the case of a Default by a Party, Paragraph 14 of the Rules prescribes that if a Party, in the absence of exceptional circumstances, does not comply with a provision of, or a requirement under, these Rules, the Panel shall draw such conclusions therefrom as it considers appropriate. In this case no Response has been submitted and none of the contentions by Complainant have been contested, despite the opportunity given to do so. The Panel will therefore have to operate and consider the case on the basis of the factual circumstances contained in the Complaint and the documents available to support those contentions.

The Registrar Verification confirms that the Policy is applicable to this case. Consequently, there is an obligation for Respondent to submit to a mandatory administrative proceeding as now initiated in respect of the domain name at issue.

Paragraph 4(a) of the Policy directs that Complainant has to prove each of the following:

- that the domain name registered by Respondent is identical with, or confusingly similar to, a trademark or a service mark in which Complainant has rights;

- that Respondent has no rights or legitimate interests in the domain name; and

- that the domain name has been registered and is being used in bad faith.

In the following part of this Decision, the Panel discusses each of those elements.

In this respect, Complainant has, according to Paragraph 4(a)(i) of the Policy, to prove that the domain name at issue is identical or confusingly similar to a trademark or a service mark in which Complainant has rights.

The domain name at issue is <porschetoy.com>.

Complainant has stated that it is the owner of registrations of the trademark "Porsche" in a number of countries on the basis of national, regional and international registrations. Those statements have been supported by registration documents. The Panel considers it to be established that Complainant is the holder of rights in the trademark "Porsche" with validity in, inter alia, France. Furthermore, the Panel agrees with Complainant to the effect that this mark is to be considered as well known basically all over the world.

The domain name at issue integrates Complainant’s trademark with the addition of ".com" and "toys." Taking into account, in particular, the distinctive character of the trademark and its reputation, the Panel concludes that the additions are such that they do not remove the likelihood of confusion. The overall impression is therefore that there is a clear confusing similarity between Complainant’s trademark and the domain name at issue.

In this respect, Complainant has, according to Paragraph 4(a)(ii) of the Policy, to prove that Respondent has no rights or legitimate interests in the domain name.

As regards this element, Complainant contends essentially that there is, at the side of Respondent, neither a use nor a bona fide offering of goods or services under the domain name, and Complainant also suggests that Respondent has intentionally sought to capture users looking for information about Complainant and its activities in order to attract them to the complex pornographic and dialer program contents which are made available at the website connected to the domain name.

Despite the opportunity given to comment on Complainant’s allegations, Respondent has not submitted any Response and consequently not responded to those allegations.

As mentioned above, the Panel considers it to be established that Complainant has trademark rights in the mark "Porsche" which is a well known mark distinguishing high-quality sports cars and also that the domain name and the trademark are confusingly similar. The Panel furthermore notes in this context the character of the use that Respondent has made of the domain name and which has been referred to above. Respondent has not commented upon the allegations as to the use of the domain name.

In view of the circumstances present in this context, the Panel comes to the conclusion that in fact Respondent has no rights or legitimate interests in the domain name at issue.

In this respect, Complainant has, according to Paragraph 4(a)(iii) of the Policy, to prove that the domain name has been registered and is being used in bad faith. Furthermore, Paragraph 4(b) of the Policy sets out some circumstances which, in particular but without limitation, shall, if found to be present by the Panel, be considered as evidence of registration and use in bad faith.

The Panel has, as indicated above, come to the conclusion that Respondent has no rights or legitimate interest in the domain name which includes in a confusingly similar way the protected prestigious trademark. The fact that Respondent has used the domain name with the inclusion of that trademark for propagating pornographic contents must in the view of the Panel be interpreted to mean that Respondent has intentionally used the domain name at issue for attracting unsuspicious users and to thereby increase Respondent’s commercial benefits. The fact that the domain name is used for marketing replicas not only of Porsche cars but also of other cars points in the same direction.

Upon consideration of those circumstances the Panel considers that sufficient evidence is at hand to conclude that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website, as stated in Paragraph 4(b)(iv) of the Policy. Consequently, the Panel considers it to be established that Respondent has registered and is using the domain name in bad faith.

On the basis of the foregoing, the Administrative Panel concludes that it has been established that the domain name at issue is confusingly similar to the trademark in which Complainant has rights, that Respondent has no rights or legitimate interests in the domain name and that the domain name has been registered and is being used in bad faith. Complainant’s request for a transfer of the domain name to Complainant shall consequently be approved.

In accordance with Complainant’s request and with reference to Paragraph 4(i) of the Policy, the Administrative Panel requires that the domain name <porschetoy.com> be transferred to Complainant.