WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Dr. Ing. h.c. F. Porsche AG v. The Eight Black Group, Simon Chen and Denise Marble Case No. D2009-0989 1. The Parties
The Complainant is Dr. Ing. h.c. F. Porsche AG of Stuttgart, Germany, represented by Lichtenstein, Körner & Partners, Germany.
The Respondents are The Eight Black Group and Simon Chen of Victoria, Australia and Denise Marble of Michigan, United States of America (“USA”). 2. The Domain Names and Registrar
The disputed domain names and (the “Domain Names”) are registered with GoD, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 22, 2009. The Center transmitted its request for registrar verification to the Registrar on July 22, 2009. The Registrar responded the same day, stating that the Domain Names were registered with it, that the registrant of was Simon Chen of The Eight Black Group and the registrant of was Denise Marble, that the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) applied to the registration, that the Domain Names would remain locked during this proceeding, that the registration agreement was in English, and that the Domain Names were created on February 12, 2004. The Registrar stated that it had not received a copy of the Complaint and provided the full contact details in respect of the Domain Names on its Whois database.
The Center verified that the Complaint satisfied the formal requirements of the UDRP, 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondents of the Complaint, and the proceedings commenced on July 30, 2009. The Complaint was notified by courier and email to the addresses specified in the contact details for the Domain Names on the Registrar's Whois database, and also to postmaster@ the respective Domain Names. In accordance with paragraph 5(a) of the Rules, the due date for Response was August 19, 2009. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on August 27, 2008.
The Center appointed Jonathan Turner as the sole panelist in this matter on September 8, 2009. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules. Having reviewed the file, the Panel is satisfied that the Complaint complied with applicable formal requirements, was duly notified to the Respondents and has been submitted to a properly constituted Panel in accordance with the Policy, the Rules and the Supplemental Rules. 4. Procedural Ruling
Under paragraph 3(c) of the Rules, a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder. This rule has been interpreted as permitting a single complaint in relation to a number of domain names whose registrant is in effect the same entity, even though different names are used in the contact details held by the registrar or registrars: see, for example General Electric Company v. Marketing Total S.A,WIPO Case No. D2007-1834.
In this case, the registrant of is identified in the Registrar's Whois database as The Eight Black Group, with Simon Chen as the administrative and technical contacts; while the registrant, administrative contact and technical contact of are identified as Denise Marble. The email address of Simon Chen is given as simon.chen@ and that of Denise Marble as info@. In correspondence with the Complainant, Simon Chen stated that he owned both Domain Names and the footer of his emails contained a logo comprising the name “EIGHTBLACK”. The Domain Names were both registered on the same date.
In all the circumstances, the Panel is satisfied that the Domain Names are registered for the same entity, namely Simon Chen trading as “EIGHTBLACK”. The Panel therefore considers that the Complaint has been properly brought in respect of both Domain Names. 5. Factual Background
The Complainant is a well-known manufacturer of sports cars and has registered PORSCHE as a mark in numerous countries.
The Domain Names were created on February 12, 2004. The Domain Name was directed to a website which advertised an electronic book called “The Ultimate Guide To The Porsche Brand” containing information said to be useful for buyers and owners of Porsche cars. Currently neither of the Domain Names resolves to a website.
The Complainant's representative contacted the Respondent, Simon Chen, by email on March 27, 2009, alleging that the registration and use of the Domain Name infringed the Complainant's trademarks. The letter went on to say: “We trust that you will appreciate the reasons for asking you to transfer the domain name to our client, even more so as your project, the E-book, does not seem to have much relevance to you any more”.
Mr Chen replied by email on March 29, 2009, stating that he was curious as to why it had taken the Complainant nearly five years since the registration to approach him and that he thought it was “reasonable to expect some kind of small compensation for releasing the domain to your client”.
The Complainant's representative responded on March 30, 2009, stating that Mr Chen's use of the Domain Name had not come to the Complainant's attention earlier, offering to reimburse Mr Chen's registration costs, but adding that the Complainant's policy was not to encourage cybersquatting by making payments for domain names incorporating its mark and that it would invoke the UDRP if necessary.
Mr Chen replied by a further email the same day, submitting that he was not in the same category as a cybersquatter, in that he “never simply registered the name to cause a nuisance” but because he wrote an e-book which he marketed online for some time. He added that the book was in the process of being updated. He observed that pursuing the matter via the typical legal channels would involve considerable expense. He mentioned that he owned both of the Domain Names and would release both of them to the Complainant for €5000. 6. Parties' Contentions A. Complainant
The Complainant contends that the Domain Names are confusingly similar to marks in which it has rights. It points out that the distinctive part of the Domain Names is its mark PORSCHE and that the addition of descriptive terms such as “experience” and “guides” adds to confusion by indicating to Internet users that the Domain Names are used by the Complainant or an associated entity to provide official information.
The Complainant submits that the Respondents have no rights or legitimate interests in respect of the Domain Names. The Complainant asserts that there has been no use or preparation to use the Domain Names in connection with a bona fide offering of goods or services. According to the Complainant, the Respondents' use of the Domain Name to promote an electronic book and thus generate revenues shows that they registered it for that purpose. The Complainant notes that the Domain Name may have been registered for the same purpose but so far as it is aware, this Domain Name has not been used.
The Complainant adds that the Respondents have never been an authorised dealer or licensee of the Complainant or had any other relationship with the Complainant; that the Respondents are not commonly known by the Domain Names; and that they are not making non-commercial use of the Domain Names.
The Complainant alleges that the Domain Names were registered and are being used in bad faith. The Complainant notes that the Respondents were aware of its mark when they registered the Domain Names. The Complainant submits that the Respondents registered the Domain Names and a further domain name, , in order to prevent the Complainant from reflecting its mark in a corresponding domain name.
The Complainant maintains that the Respondents wanted to mislead Internet users seeking genuine information about the Complainant and its products. The Complainant submits that there has been no attempt by the Respondents to avoid confusion; in particular there was no disclaimer or clarification of their lack of relationship with the Complainant when their website was active. The Complainant further relies on the Respondents' passive holding of for over five years and the use of false contact details in relation to this Domain Name as evidence of bad faith.
Finally, the Complainant points to Mr Chen's attempt to sell the Domain Names for €5000 as confirming bad faith.
The Complainant requests a decision that the Domain Names be transferred to it. B. Respondents
As mentioned above, the Respondents did not reply to the Complaint, although the Respondent, Mr Chen, asserted in correspondence with the Complainant's representative that he registered the Domain Name because he wrote an electronic book which he marketed online. 6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding, the Complainant must prove (i) that the Domain Names are identical or confusingly similar to a mark or marks in which it has rights; (ii) that the Respondents have no rights or legitimate interests in respect of the Domain Names; and (iii) that the Domain Names have been registered and are being used in bad faith.
In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from the Respondents' default as it considers appropriate. This includes the acceptance of plausible evidence of the Complainant which has not been disputed. A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the mark PORSCHE.
The Panel further finds that both Domain Names are confusingly similar to this mark, from which they differ only in the addition of the non-distinctive elements “experience” or “guides” and the generic top level domain suffix. These elements do not distinguish the Domain Names from the Complainant's mark. On the contrary, Internet users are liable to suppose that they have been registered by the Complainant to provide information about its products.
The first requirement of the UDRP is satisfied. B. Rights or Legitimate Interests
On the evidence, it appears that the Respondent, Mr Chen, has used the Domain Name to promote an electronic book providing information about Porsche cars, entitled “The Ultimate Guide To The Porsche Brand”. The Panel is not satisfied on the evidence that this was not a bona fide offering of goods or services.
The Complainant does not appear to claim that the book did not exist, and there is no evidence that it was bogus. The Panel therefore proceeds on the basis that the book existed and that Mr. Chen used the Domain Name to promote it.
On the evidence, it appears that the Respondents were not using the Domain Names to sell any other goods or services; or at any rate there is no evidence that they were doing so. The Panel therefore proceeds on the basis that this was not a “bait and switch” operation.
Mr Chen's website did not contain a specific disclaimer of any relationship with the Complainant, but it did say that it was created by an enthusiast who had owned three Porsches and would never buy anything else. In the Panel's view an Internet user viewing the website could not be in any doubt that this was an unofficial website created by an enthusiast.
It is also clear that Mr Chen engaged in this use of the Domain Name before notice of any dispute.
The Panel therefore finds that the second requirement of the Policy has not been satisfied in relation to the Domain Name .
The Respondents do not appear to have actively used the Domain Name . In the Panel's view, the use of the Domain Name to promote a guide to Porsche cars could possibly amount to a use of a name corresponding to the Domain Name in relation to a bona fide offering of goods or services for the purpose of paragraph 4(c)(i) of the UDRP. However, it is not necessary to decide this point, since the Panel has concluded that the Complaint fails in relation to this Domain Name for lack of evidence of registration in bad faith, as discussed below. C. Registered and Used in Bad Faith
The two parts of the third requirement of the UDRP are separate conditions: to succeed in a complaint, the Complainant must show that the domain name both was registered and is being used in bad faith. It is convenient to consider registration first.
The Complainant contends that the Domain Name must have been registered for the purpose of promoting Mr Chen's electronic book and it appears to accept that the Domain Name may have been registered for the same purpose.
The Panel does not regard such use as inherently in bad faith and does not find any evidence in the Complaint that the manner of the use apparently intended by the Respondents involved bad faith. As stated above, an Internet user viewing the website subsequently created by Mr Chen could not be in any doubt that this was an unofficial website created by an enthusiast. In these circumstances, it cannot be inferred that the Respondents set out to mislead Internet users.
If, as the Complainant accepts, the Respondents registered the Domain Names for the purpose of promoting Mr Chen's electronic book, it follows that the Respondents did not register them primarily for the purpose of sale, even though the Respondents subsequently offered to sell them for a substantial price to the Complainant.
Furthermore, the Panel does not accept the Complainant's suggestion that the Respondents registered the Domain Names and in order to prevent the Complainant from reflecting its mark in a corresponding domain name. The Respondents' registration of these three domain names could not significantly impede the Complainant in reflecting its mark in suitable domain names.
Although the Complainant's mark has a very high reputation, it does not follow that any use of it in a domain name would be in bad faith for the purpose of the Policy. Given the use made by the Respondents of the Domain Name , the Panel is unable to infer from the record that either of the Domain Names was registered in bad faith.
In these circumstances, the Panel concludes that the Complainant has not shown that the Domain Names were registered in bad faith. It follows that the third requirement of the UDRP is not satisfied in relation to either of the Domain Names. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Jonathan Turner
Sole Panelist
Dated: September 12, 2009
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