Dr. Ing. h.c. F. Porsche AG v. Automotive Parts Solutions

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Dr. Ing. h.c. F. Porsche AG v. Automotive Parts Solutions

Case No. D2003-0725

1. The Parties

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

Respondent is Automotive Parts Solutions, Chicago, Illinois, of United States of America.

2. The Domain Names and Registrar

The disputed domain names are the following : <911hyundai.com>, <porschepartx.com>.

The domain names are registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center")

on September 15, 2003. On September 17, 2003, the Center transmitted by email

to Go Daddy Software a request for registrar verification in connection with

the domain names at issue. Go Daddy Software 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 September

25, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response

was October 15, 2003. The Respondent did not submit any response. Accordingly,

the Center notified the Respondent’s default.

The Center appointed Christiane Féral-Schuhl as the sole panelist in

this matter on November 5, 2003. 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

Complainant is a worldwide well-known car maker utilizing "Porsche"

as its trade name. The number "911" is the name of one of its model

which is highly reputed.

Complainant is the owner of trademarks consisting of or incorporating the word

"Porsche" in the USA, Canada, Germany, Europe… which are exhibited

in Annex 3 of the Complaint.

Complainant operates a web site at "www.porsche.com" which opens

the gate to national web sites.

Respondent has not filed any answer allowing the panel to identify its true

activity.

Nevertheless, it appears that Respondent has registered a large number of domain

names including the name of famous car companies listed in Annex 11 of the Complaint.

Such domain names also include a descriptive element composed of a word which

relates in some way to the car business: "part", "shop",

"truck", "auto". As an example, Respondent has registered

<audipartx.com>; <pontiacautopartx.com>; <lexus-auto-and-parts.com>…

In addition, these domain names and the contested domain names (<porschepartx.com>

and <911hyundai.com>) point to standard web sites with exactly the same

content and design. Names have been changed to reflect the respective domain.

Phone numbers given in the contact section of the various domain names are the

same. An identical disclaimer is featured at the bottom of the websites.

Within subsections of the web site various car parts are mentioned to be sold.

Through investigations conducted by Complainant, a single individual appears

to be running the web sites under the domain names concerned as well as under

the domain names mentioned at Annex 11 of the Complaint.

Complainant sent two cease-and-desist letters to Respondent by mail but did

not receive any response, due to incorrect contact information in the whois

records. An E-mail version of the cease-and-desist letter was not answered either.

5. Parties’ Contentions

A. Complainant

Complainant claims that the disputed domain names are confusingly similar to

Complainant’s trade name and trademark "PORSCHE" and "911"

respectively, stressing the fact that the gTLD ".com" does not prevent

confusion (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO

Case No. D2000-0003, February 18, 2000).

Complainant emphasizes that these trade names and trademarks are well known

all over the world and integrated in their entirety into Respondent´s domain

names.

According to Complainant, a descriptive component like "partx", standing

for "parts exchange" even adds to the confusion because the user is

led to believe that the trademark owner or some entity associated with it, operates

a sales platform for original new or certified used car parts.

With regard to <911hyundai.com> Complainant explains that similarity

is not prevented by adding to "911" the name "Hyundai",

which is the trade name and trademark of a well-known Korean car manufacturer.

Complainant adds that the combination of these elements suggests a cooperation

of both car manufacturers and is thus confusingly similar to both trademarks

and trade names (Allianz AG and Dresdner Bank AG v. MIC, WIPO

Case No. D2001-1298, February 19, 2002).

Complainant explains that a domain name composed of trademarks owned by different

parties is still confusingly similar with all the trademarks involved because

the public is led to believe in a merger or cooperation between the trademark

owners, in particular if they are active in the same line of business, like

two car manufacturers.

As far as legitimate use is concerned, Complainant explains that:

(i) Respondent has no right or legitimate interest in respect of the domain

names. Complainant points out that there is no use nor are there any plans to

use the domain names with a bona fide offering of goods or services (paragraph

4 (c) (i) of the UDRP). Complainant indicates that Respondent is not just offering

original car parts but all kinds of used parts from all kinds of sources, including

parts manufactured by unknown manufacturers and remanufactured used parts which

might pose a great risk to people relying on the good name of "Porsche".

This is not a legitimate use according to Complainant, in particular as Respondent

tries hard to remain anonymous, thus avoiding being held responsible for the

parts sold online, and completely fails to disassociate itself from Complainant.

Since the trade name and trademark involved is well known and has been used

for a long period of time, Respondent would have to bring evidence for his legitimate

interest (Dr. Ing. h.c. F. Porsche AG v. MACROS-TELECOM corp, WIPO

Case No. D2001-0993, October 16, 2001). The Respondent is not and

has never been an authorized dealer of Complainant’s products and there is not

and never has been a business relationship between the parties.

(ii) Respondent is not commonly known by the domain-name.

(iii) Respondent is also not making noncommercial use of the domain.

According to Complainant, Respondent has registered and uses the disputed domain-name

in bad faith for the following reasons:

(i) Respondent could not have been unaware of Complainant’s trade name and

trademark and its reputation when he made the registration as he is involved

in the business of selling car parts.

(ii) Respondent registered the domain name <porschepartx.com> in order

to prevent the Complainant from reflecting its mark in a corresponding domain

name, and Respondent engaged in a pattern of such conduct, having registered

dozens of domain names composed of a famous trademark and a generic word indicating

the sale of cars or car parts.

(iii) Respondent intentionally misleads and traps users who seek genuine information

about the Complainant and its products. As mentioned above, there is nothing

in the domain names or the web site indicating that the Respondent is not the

Complainant.

This is also a case of general bad faith because Respondent intentionally and

systematically uses false contact information in the whois records to evade

litigation.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

The Panel’s findings under each heading with reference to the parties’ contentions,

the Policy, Rules, Supplemental Rules and applicable substantive law are the

following:

A. Identical or Confusingly Similar

Complainant has proven that he is the owner of the trademarks "PORSCHE"

and "911".

Such trademarks are included in the two contested domain names, <porschepartx.com>

and <911hyundai.com> respectively.

Regarding <porschepartx.com>, the fact that the term "partx"

is added to Complainant’s trademark does not eliminate the identity or, at least

the similarity between Complainant’s trademark and the contested domain name

as "partx" is a descriptive component of the domain name. In

numerous cases, it has been stated that a domain name that wholly incorporates

a Complainant’s registered mark may be sufficient to establish confusing similarity

for purposes of the UDRP.

<911hyundai.com>’s identity or similarity is also obvious, even though

Complainant’s trademark is associated with a third party’s trade name and/or

trademark which is not a party in the present procedure. The Panel agrees with

the position stated by the Panel in Chevron Corporation v. Young Wook Kim,

WIPO Case No. D2001-1142, December 13,

2001) regarding the domain name <chevron-texaco.com>. In the present case,

the whole of the domain name is confusingly similar to Complainant’s trademark.

As a consequence, the action brought by Complainant meets the requirement of

Article 4 (a)(i) of the UDRP.

B. Rights or Legitimate Interests

Article 4(a)(c) of the URDP explains how a Respondent may demonstrate its rights

to and legitimate interests in a domain name in responding to a complaint.

In the present matter, Respondent has not filed any response.

In addition, it appears that Respondent is neither affiliated to Complainant

nor an official dealer. There is no and there has never been any legal or business

relationship between the parties.

As a consequence, such as in the "Telstra" decision (Telstra Corporation

Limited v. Nuclear Marshmallows, WIPO

Case No. D2000-0003, February 18, 2000) it can be stated that: "

Respondent has not provided evidence of circumstances of the type specified

in paragraph 4(c) of the Uniform Policy, or of any other circumstances giving

rise to a right to or legitimate interest in the domain name. In light of (i)

the fact that the Complainant has not licensed or otherwise permitted the Respondent

to use any of its trademarks or to apply for or use any domain name incorporating

any of those marks, and (ii) the fact that the word <TELSTRA> appears

to be an invented word, and as such is not one traders would legitimately choose

unless seeking to create an impression of an association with the Complainant,

the Administrative Panel finds that the Respondent has no rights or legitimate

interests in the domain name."

Although Complainant’s trademarks are not invented words but respectively the

name of a person ("Porsche") and a number ("911"), the facts

brought to the Panel’s attention in WIPO Case

No. D2000-0003 are similar to the one of the present dispute.

The Panel finds that in the present case there is no proof that Respondent

has a right or legitimate interest in the contested domain names.

C. Registered and Used in Bad Faith

Respondent is apparently well informed about the car business in view of the

websites operated under the contested domain names.

Thus, there is no doubt that when registering the contested domain names Respondent

knew that it was using protected trademarks and/or trade names.

Respondent has not proven that it had any right whatsoever to do so.

In addition, the registration, in the same domain name ("911hyundai"),

of the trademarks of two competitors is a clear act of bad faith. Respondent

intentionally seeks to suggest that there is some sort of cooperation between

Porsche and Hyundai.

As a consequence, the Panel finds that the registration of the contested domain

names have been made in bad faith.

As far as bad faith use is concerned, the Panel notes that Respondent is obviously

engaged in a pattern of conduct consisting or registering trade names and/or

trademarks of famous car companies and operating them under a unique web site.

In fact, Respondent appears to have changed few decorative elements of this

web site for each domain name in order to match the reproduced trademark.

Moreover, it is not proven that Respondent is or has been an authorized dealer

of Complainant’s products and/or that there is or has been a business relationship

between the parties.

The Panel also wishes to emphasize that Respondent intentionally and systematically

uses false contact information in the whois records which makes it quite impossible

to contact.

The Panel finally notes that a car parts reseller who is impossible to contact

and does not respond to a Complaint filed by the company which produces the

cars for which Respondent sells its products clearly acts in bad faith.

Therefore, the Panel finds that the contested domain names were registered

and are used in bad faith.

D. Remedy Requested

The remedy requested by Complainant regarding <porschepatrx.com> does

not raise any objection from the Panel.

Regarding the domain name <911hyundai.com> the Panel notes that

the present action is brought in absence of any letter of support of any kind

from Hyundai and that Hyundai is not a party in the present matter.

The Panel wishes to emphasize that in Framatome, Siemens Aktiengesellschaft

and Framatome ANP v. Manu&Gi, WIPO

Case No. D2001-1424 (January 31, 2002), the transfer of the domain name

<framatome-siemens.com> was justified due to Framatome and Siemens co-action.

In (L’Air Liquide v. MIC) WIPO Case

No. D2001-1246, December 12, 2001, L'Air Liquide has a letter of support

from Suez Lyonnaise Des Eaux in order to request the transfer of the domain

name <suezairliquide.com>.

The Panel considers that the transfer of <911hyundai.com> would violate

a third party’s right – Hyundai – in the absence of a letter of support from

it or a co-action, although the Panel is aware that in some cases such a transfer

was ordered but due to specific circumstances, i.e. a probable merger between

the holder of the two trademarks included in the contested domain name (Chevron

Corporation v. Young Wook Kim, WIPO Case

No.D2001-1142, <chevron-texaco.com>).

However, the situation in this dispute differs as Complainant requests the

cancellation of the domain name <911hyundai.com> and not the transfer.

The Panel therefore finds that cancellation in the present case is the appropriate

remedy.

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 name <porschepartx.com> be transferred to Complainant.

- the domain name <911hyundai.com> be cancelled.

Christiane Féral-Schuhl

Sole Panelist

Dated: November 17, 2003

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