ADMINISTRATIVE PANEL DECISION
Dr. Ing. h.c. F. Porsche AG v. Sabatino Andreoni
Case No. D2003-0224
1. The Parties
The Complainant is Dr. Ing. h.c. F. Porsche AG, Porscheplatz 1, 70435 Stuttgart, of Germany, represented by Lichtenstein, Körner & Partners of Germany.
The Respondent is Sabatino Andreoni, 6352 villanelle, Montreal, Quebec H1S1W1, of Canada.
2. The Domain Names and Registrar
The disputed domain names
are registered with Go Daddy Software, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 21, 2003. On March 21, 2003, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain names at issue. On March 21, 2003, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on March 28, 2003. 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 March 28, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was April 17, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondents default on April 22, 2003.
The Center appointed Petter Rindforth as the Sole Panelist in this matter on April 28, 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
The Complainant is known throughout the world as a maker of sports cars and has been using “Porsche” as the prominent and distinctive part in its trade name for more than 50 years. Complainant is the owner of numerous trademark registrations consisting of or incorporating the word “Porsche,” such as:
Canadian Trademark No TMA117101 “Porsche” & Design, filed December 2, 1958, and registered March 4, 1960. German Trademark No 643 195 “Porsche” Logo, registered August 26, 1953. International Registration No 179 928 “Porsche” Logo, registered October 8, 1954.
Copies of Certificates of Registration and printouts from trademark databases, showing details of Complainants registered trademarks are provided as Annex 1 – 10 and 12 of the Complaint.
In the 1980s the Complainant manufactured the “924” series of sports cars (Annex 13).
Complainant sells its products throughout the world through a network of authorized dealers, and operates several websites of which the main sites are “http://www.porsche.de” and “http://www.porsche.com.”
The Respondent registered the domain names porsche924.com on October 14, 2002; porschepicture.com, porschepictures.com, porschewallpaper.com and porschewallpapers.com on February 18, 2002; and porschescreensavers.com on March 25, 2002.
No specific information is provided about the Respondents business activities, except for what is stated in the Complaint. According to the website of the Respondent (Annex 14 of the Complaint):
“Andreoni is a digital art studio with extensive graphic design, website design and marketing experience. Andreoni can provide assistance to any type of business in achieving success with new products, websites and promotion campaigns”
5. Parties Contentions
The trademark and trade name “Porsche” are known throughout the world and enjoy a reputation for high quality, performance and prestige. The Complainant has spent decades and huge effort to build this reputation and it is interested in protecting it from any type of infringement and tarnishment. The disputed domain names are similar to Complainants trade name and trademark “Porsche” as this trademark forms the distinctive part of the domain names (here, the Complainant refers to Dr. Ing. h.c.F. Porsche AG v. Gary Charles Brown, a k a Gary Brown, a k a Charlie Brown, a k a Gary Charlie Brown WIPO Case No. D2001-0919 (September 15, 2001) ).
The component “picture(s),” “screensaver” and “wallpaper(s) are descriptive and therefore not distinctive. The same applies for the number “924” which is a car model built by the Complainant.
The Respondent offered, among other things, “sponsored wallpapers” on his website. The wallpapers are named after famous automobile brands such as Mercedes, BWM, Corvette, Toyota, Ferrari and Porsche (Annex 15). The Porsche-wallpapers consist of photos of the Porsche GT model, the Porsche shield, and with the name “Porsche” in its typical typeface. These photos are combined with erotic photos of women and the claim “DESIGN BY ANDREONI.COM” (Annex 16).
The pages where the wallpapers are displayed cannot be scrolled down so a tiny, barely readable disclaimer remains completely invisible. The disclaimer says that “Andreoni” recognizes registered names and logos and is “not affiliated” with the owners of these trademarks. There is no disclaimer on the “sponsored wallpapers.” Internet users are invited to copy these wallpapers to their desktop screen by applying a standard function provided by the windows software activated by pressing the right key on the computer mouse.
The Complainant points out that the standard disclaimers do not prevent similarity because they just become visible after the misleading domain name had attracted the user in the first place.
The Respondent has no right or legitimate interest in respect of the domain names and is not commonly known by the domain names. The Complainant states that there has never been any business relationship whatsoever between Complainant and the Respondent. Complainant is not sponsoring or endorsing Respondents activities in any respect and has not given its consent to the exploitation of its trademarks or trade name. Respondent is no official dealer of Porsche cars.
The contested domain names redirect to advertising websites maintained and operated by Respondent (as shown by Annex 17). According to the Complainant, the links only serve the purposes of taking the visitors to the Respondents main site, “http://www.andreoni.com,” and Complainants trademarks are used to advertise Respondents web design business.
The websites under the contested domain names all have a disclaimer in a tiny typeface:
“Andreoni recognizes that “Porsche,” the Porsche Logo and various model numbers and cars are registered trademarks of Porsche A.G. These terms and images are used for identification and artistic purposes only. Andreoni is not affiliated in any way with Porsche A.G.”
The Respondent is also, according to the Complainant, owner of the domain name porschedesign.com, which is used in the same way as the contested domain names. porschedesign.com, registered by a Mr. Michel Galarneau, was subject to a decision under the UDRP in the case Dr. Ing. h.c. F. Porsche AG v. Michel Galarneau (WIPO Case No. D2001-1448) – copy of the decision provided as Annex 18. Even though the administrative panel directed the domain name to be transferred to Complainant and Complainant demanded that from the Registrar in that case, the domain name was mistakenly cancelled and later registered by the Respondent. Respondent is obviously aware of the fact that the Complainant claims this domain name, and – in order to frustrate further litigation – registered through an agent. As the said domain name is linked to Andreonis websites it is obvious that the registrant information “Registration Private Domains by Proxy, Inc.” (Annex 19) is just a cover up used to make it impossible to institute legal proceedings against the Respondent who is the real owner of this domain name.
The Complainant further claims that there are a huge number of domain names openly registered by the Respondent and composed of famous trademarks from the auto, racing, software and film industries plus “wallpaper” and various standard components. These domain names all redirect to websites designed and operated in exactly the same way as the websites available under the contested domain names. Copies of whois and websites are submitted as Annex 20, including:
bmwpicture.com, bmwscreensavers.com, bmwwallpapers.com, corvettewallpapers.com, f1picture.com, f1screensavers.com, f1wallpaper.com, f1wallpapers.com, ferrari360modena.com, ferrarif40.com, ferrarif50.com, ferrarihistory.com, ferrarikitcar.com, ferrarilogo.com, ferraripic.com, ferraripicture.com, ferraripictures.com, ferrariposter.com, , ferrariscreensaver.com, ferrariscreensavers.com, ferrarivideos.com, ferrariwallpaper.com, ferrariwallpapers.com, mercedespictures.com, mercedesracing.com, mercedeswallpaper.com, mercedeswallpapers.com,windowsxpscreensavers.com, windowsxpwallpapers.com, matrix2screensaver.com, matrix2screensavers.com, matrix2wallpaper.com, matrix2wallpapers.com, spidermanwallpaper.com, spidermanwallpapers.com.
The Respondent has registered and is using the disputed domain names in bad faith, with the only purpose to promote its own design business by attracting users who seek information from and about the Complainant. Bad faith is further evidenced by the cybersquatting activities carried out by Respondent described above and by the use of (standard) disclaimers on the various websites.
On February 26, 2003, the Complainant sent a cease and desist letter by e-mail to Andreoni as well as Domains by Proxy, explaining the legal background and demanding the transfer of the disputed domain names by March 7, 2003 (Annex 21). Complainant received no response.
The Complainant requests, that the Administrative Panel issue a decision that the contested domain names be transferred to the Complainant.
The Respondent did not reply to the Complainants contentions.
6. Discussion and Findings
According to Paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) that the Respondents domain name 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.
A. Identical or Confusingly Similar
The Complainant is the owner of the registered trademark “Porsche” in various countries, among them Canada, the country of the Respondent. “Porsche” has been in use for more than 50 years, and this Panel concludes that it is a well known trademark for automobiles.
The relevant parts of the domain names are porsche924, porschepicture, porschepictures, porschescreensavers, porschewallpaper and porschewallpapers. None of the disputed domain names are identical to the trademark “Porsche.” However, they all consist of “Porsche” followed by a generic addition with no distinctive character – apart from “924” which directly refers to the Complainants 924 series of sports cars from the 1980s.
“Pictures,” “screensavers,” “wallpaper” all refers to products that may well be offered by the Complainant as parts of an advertising campaign for the car.
The Panel finds that the domain names are confusingly similar to Complainants trademark “Porsche.”
B. Rights or Legitimate Interests
The Respondent is not an authorized agent or licensee of the Complainants products or services and has no other permission to apply for any domain name incorporating the trademark “Porsche.”
By not submitting a response, the Respondent has failed to invoke any circumstance that could demonstrate, pursuant to Paragraph 4(c) of the Policy, any rights or legitimate interests in the domain names.
The Panel therefore concludes that the Respondent has no rights or legitimate interests in the domain names.
C. Registered and Used in Bad Faith
To fulfill the third requirement, the Complainant must prove that the domain names have been registered and are being used in bad faith. Paragraph 4(b) of the Policy sets out a number of circumstances that shall, in particular but without limitation, be evidence of the registration and use of a domain name in bad faith, for example:
Circumstances indicating that the Respondent has registered the domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct.
The “Porsche” trademark is well known throughout the world and accordingly so also in the Canada, the residence of the Respondent.
As shown by Annex 20 of the Complaint, the Respondent is indeed engaged in a pattern of registering numerous domain names including others trademarks, such as BMW, Corvette, Ferrari, Mercedes, Windows, Matrix, etc. This pattern indicates that the Respondent registered the disputed domain names in order to prevent the Complainant from reflecting the trademark “Porsche” in domain names used, for example, for a website related to the 924 model or to promotional pictures and other advertising material for “Porsche.”
By using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website or other on-line location, by creating a likelihood of confusion with the Complainants mark as to the source, sponsorship, affiliation, or endorsement of the said website / location or of a product or service on that website / location.
All the disputed domain names are linked to Respondents commercial websites, offering web design services, other graphic design and “promotion campaigns.” It is obvious for this Panel that the domain names as such are created in an effort to take advantage of the well-known trademark “Porsche.” The Panel finds it most likely that the average Internet user expects to find information from the Complainant under domain names as porsche924, porschepicture, porschepictures, etc.
It is however also a fact that the Respondent has used a disclaimer on the said web pages, stating that:
“Andreoni recognizes that Porsche, the Porsche Logo and various model numbers and cars are registered trademarks of Porsche A.G. These terms and images are used for identification and artistic purposes only. Andreoni is not affiliated in any way with Porsche A.G.”
A number of previous decisions have dealt with disclaimers. In the ISL Worldwide and The Federal Internationale de Football Association .v. Western States Ticket Service (WIPO Case D2001-0070) – fifatickets.com, also referred to by the Complainant, the Panel stated:
“The Panel does not find the Respondents Disclaimer effective for the purposes of either paragraph 4(a)(i) or 4(a)(iii) of the Policy. It is tantamount to committing a tortuous act but then seeking to avoid liability after the event. It is only by unauthorised use of the trademark that the potential customer is brought to the website (containing the disclaimer) in the first place.”
In this case, the disclaimer – which is in a rather small typeface, states that Andreoni is not affiliated with the Complainant. However, the websites under the disputed domain names also states “Andreoni.com displays high resolution Porsche pictures A new Porsche picture, wallpaper and screensaver could be added soon,” indicating at least that the Complainant has endorsed the use of the disputed domain names, the Porsche trademarks and images.
The Respondent did not reply to the cease and desist letter from the Complainant, and no response was filed as a reaction to the Complaint, therewith adding to the circumstances indicating bad faith registration and use.
Given the above circumstances, the Panel concludes that the Respondent registered and is using the domain names in bad faith.
The Panel concludes that the Complainant has succeeded in proving the three elements within paragraph 4(a) of the Policy.
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, porsche924.com, porschepicture.com, porschepictures.com, porschescreensavers.com, porschewallpaper.com and porschewallpapers.com be transferred to the Complainant Dr. Ing. h.c. F. Porsche AG.