WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dr. Ing. h.c. F. Porsche AG v. Dmitry Samsonov
Case No. D2008-0042
1. The Parties
The Complainant is Dr. Ing. h.c. F. Porsche AG, Germany, represented by Lichtenstein, K�rner & Partners, Germany.
The Respondent is Dmitry Samsonov, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name is registered with eNom, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 10, 2008. On January 11, 2008, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the domain name at issue. On January 11, 2008, eNom, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 January 17, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was February 6, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 7, 2008.
The Center appointed John Lambert as the sole panelist in this matter on February 15, 2008. 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 a well-known motor manufacturer. It makes high performance and very expensive sports cars which are in great demand throughout the world. To facilitate sales of its motor cars, it offers a range of financial services in several of its major markets including Russia. It has registered the word PORSCHE as a trademark for its full range of products (including financial services) in many countries.
Very little is known of the Respondent. Communications from the Complainant to the postal and email addresses and fax number in the WhoIs register were returned undelivered. The Respondent has never used the disputed domain name as the URL for a website. Someone of the same name and address as the Respondent appears to have registered the domain names and in the Russian country code and generic top level domain spaces.
5. Parties’ Contentions
A. Complainant
Pointing to the worldwide reputation and goodwill of the PORSCHE name and mark and the many trademark registrations of that word around the world (including registrations for financial services), the Complainant contends that the disputed domain name is confusingly similar to that mark. Far from preventing confusion, the suffix “bank” gives the impression that the domain name was registered by the Complainant as a website for its financial services.
The Complainant denies that the Respondent has any right or legitimate interest in respect of the disputed domain name. He has never used the domain name for a bona fide offering of goods or services. There is not and never has been any business relationship between the parties. The Respondent is not commonly known by the disputed domain name.
Relying on the consensus views of panelists and citing Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 the Complainant urges the Panel to examine all the circumstances of the case to determine whether the Respondent is acting in bad faith. It points to the registration of and together with the registration of the disputed domain name as evidence of a pattern of conduct. It urges the Panel to conclude that the Respondent has registered as a domain name to prevent the Complainant from reflecting the marks that it has registered for financial services in a corresponding domain name.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires a Complainant to prove that each of the following elements is present:
(i) The domain name is 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 name; and
(iii) The domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
One of the many trademark registrations of the Complainant is the registration of the word PORSCHE as a Community trademark (“CTM”) for banking and other financial services in class 36 under registration number 00073098. The combination of PORSCHE with the noun BANK represents a connection with the banking and other financial services for which that CTM was granted. Accordingly, the Panel concludes that the domain name is confusingly similar to a trademark or service mark in which the Complainant has rights.
The first element is therefore present.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists the following circumstances in which a Respondent can demonstrate that it has rights or a legitimate interest in a disputed domain name:
(i) use, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) evidence that the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) evidence that the Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence that any of these circumstances apply. Nor is there evidence of other circumstances that demonstrate that the Respondent has rights or a legitimate interest in the disputed domain name.
Accordingly, the second element is present.
C. Registered and Used in Bad Faith
One of the circumstances listed by paragraph 4 (b) of the Policy as evidence of registration and use in bad faith is that the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct.
The above-mentioned CTM confers upon the Complainant a monopoly of banking and other financial services under the “Porsche” sign in the EU. The combination of PORSCHE with BANK would be an obvious domain name for a website promoting those services. The registration of therefore prevents the Complainant from reflecting its CTM in a corresponding domain name.
It is, of course, necessary for the Respondent to have engaged in a pattern of such conduct. The registration of and may not of itself constitute a pattern of conduct, but the registration of those domain names together with the registration of another domain name combining the equally famous marque MASERATI with the noun BANK certainly does.
The Panel therefore finds that the circumstances specified in paragraph 4(b)(ii) are present and that there is therefore evidence of registration and use in bad faith.
Accordingly, the third element is present.
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 be transferred to the Complainant.
John Lambert
Sole Panelist
Date: February 29, 2008
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