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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Dr. Ing. h.c. F. Porsche AG v. Sportwave, Inc.

Case No. D2003-0042

 

1. The Parties

The Complainant is Dr. Ing. h.c. F. Porsche AG, Porscheplatz 1, of Germany, represented by Lichtenstein, Körner & Partners of Germany.

The Respondent is Sportwave, Inc., of Scottsdale, AZ 85251, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <porschetennis.com> is registered with OpenSRS c/o Tucows.com Inc.

 

3. Procedural History

A complaint ("Complaint"), pursuant to the Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, ("the Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on the same date ("the Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"), was filed with the WIPO Arbitration and Mediation Center (the "Center") by e-mail on January 21, 2003.

The Acknowledgement of Receipt of Complaint was submitted to the Complainant and the Respondent by the Center on January 23, 2003. On the same date, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue.

Also on January 23, 2003, Tucows transmitted by email to the Center its verification response confirming that the domain name was registered with Tucows, that the Respondent was listed as the registrant. The reply also contained contact details for the administrative and technical contact of Respondent.

The Center verified that the Complaint satisfied the formal requirements of the Policy, the Rules, and 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 28, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was February 17, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 18, 2003.

The Center appointed Arne Ringnes as the sole panelist in this matter on February 26, 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 has for more than 50 years been a maker of high-performance sports cars. From the start Complainant has been using "Porsche" as the prominent and distinctive part in its trade name. Besides manufacturing and selling sports cars through an international organization of official dealers Complainant is offering - both on- and offline - tennis related products, such as clothing, tennis rackets and balls and is active in sponsoring tennis events and tennis players. There is also a variety of other merchandise available from Complainant, with a focus on fashion and accessories for people interested in various types of sports. Through the Porsche Travel Club Complainant also offers travel services.

Complainant is the holder of numerous trademark registrations around the world in which the trademarks consists of or incorporates the word "Porsche". In the U.S. Complainant have the following registrations:

- US Trademark Reg. No. 0618933 , Registration Date January 10, 1956, (automobiles and parts thereof)
- US Trademark Reg. No. 2134692, Registration Date February 3, 1998, (shoes, sandals, sneakers, headbands, arm bands, sun visors, neckties and belts)
- US Trademark Reg. No. 2200107, Registration Date October 27, 1998, (travel agency services, namely, arranging reservations and bookings for temporary lodging)
- US Trademark Reg. No. 1431901, Registration Date March 10, 1987, (among others printed material, namely, namely, books and magazines comprising articles relating to applicant and automotive histories)
- US Trademark Reg. No. 1315679 , Registration Date January 22, 1985, (Chronometric Instruments-Namely, Watches; Jewelry)
- US Trademark Reg. No. 1279014, Registration Date May 22, 1984, (Pill Boxes, Vases, Flasks for Perfume, Small Domestic Utensils and Containers, Glass, Porcelain and Earthenware, Beverageware and Dinnerware; Brushes and Combs; Leather Coasters)
- US Trademark Reg. No. 1280748, Registration Date June 5, 1984, (Articles of Leather or of Imitation Leather-Namely, Luggage, Suitcases, Handbags, Briefcases; Key Fobs, Key Cases, Key Pouches, Wallets, Purses, All Purpose Sport Bags, Parasols and Umbrellas)
- US Trademark Reg. No. 1315853, Registration Date January 22, 1985, (Towels)
- US Trademark Reg. No. 1503994, Registration Date September 13, 1988, (articles of outer clothing, namely shirts, pullovers, jackets and parkas; footwear; head bands and wrist bands; caps and sun visors; ties and belts)
- US Trademark Reg. No. 1370326, Registration Date November 12, 1985, (among others toys and playthings)

Since 1978, the Complainant has been title sponsor and has become organizer of the Tennis Grand Prix in Filderstadt near Stuttgart. The Complainant operates several websites, including "www.porsche.de" and "www.porsche.com". The official website of the Porsche Tennis Grand Prix is located at "www.porsche-tennis.de/en/default_flash.htm".

The Respondent has its address in the U.S. Except from the basic information relating to the registration of the said domain name provided by Tucows, all information about the Respondent has been made available by the Complainant.

In addition to the disputed domain name, Respondent has registered numerous other domain names related to tennis and tennis tournaments, including <wimbleton.org>, <wimbeldon.com>, <wimbledon.org> (official website at "wimbledon.com"), <apttennis.com> (official website at "atptennis.com"), <rolandgaross.com>, <rollandgarros.org>: (French Open, official website at "rolandgarros.org"). All of the domain names, including the one in question, drive tennis fans to Respondent’s own website "gotennis.com". On Respondent’s website it is stated that:

"GoTennis receives more traffic from players and fans than any other independent tennis website. Our ownership of hundreds of Tennis related URLs including "Tenis.com" drives thousands of tennis fans and players from Spanish, Portuguese and Eastern European countries into GoTennis.com." (Annex 27 to the Complaint).

A link called "Ticket and Tours" redirects the user to "www.tennistours.com" where Respondent’s travel services are promoted. Through "Pro Shop" the visitor is redirected to "www.gotennisshop.com" where various products are offered for sale, such as tennis related products, including clothing, tennis rackets and balls. In addition there are caps, sweat shirts, pullovers, vests, t-shirts, books, toys and games, bags and suitcases, jewelry and key-rings – the same type of products as offered by Complainant.

The products which are offered are of different origin than the ones offered by Complainant.

There has never been a business relationship between the parties and the Respondent is no official dealer.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends as follows:

Respondent’s domain name <porschetennis.com> is similar to Complainant’s trade name and trademark "Porsche".

The Complainant’s trade name and trademark is well known throughout the world and embodied entirely in the contested domain name where it forms the distinctive part (cf. Panel decision WIPO Case No. D2001-0919, <porscheimporter.com>; WIPO Case No. D2001-0993, <porsche-usa.com>).

The extension indicating the Top level domain ".com" is irrelevant (cf. Panel Decision in WIPO Case No. D2000-0003, <telstra.org> and WIPO Case No. D2001-0919, <porscheimporter.com>).

The component "tennis" is descriptive for the Tennis related activities of Complainant and therefore indistinctive. There is nothing in the disputed domain name or the whois record that would signal the public that Respondent is distinguished from Complainant (cf. Panel Decision Case No. D2001-0919, <porscheimporter.com> under No. 6). There is not even a disclaimer on the website.

Respondent has no right or legitimate interest in respect of the domain name.

Neither is there a use nor are their preparations to use the domain name with a bona fide offering of goods or services (paragraph 4(c)(i) UDRP). Since the trade name and trademark involved is well known and has been in use for a long period of time Respondent would have to bring evidence for his legitimate interest (cf. panel decision WIPO Case No. D2001-0993, <porsche-usa.com>).

There has never been a business relationship between the parties and the Respondent is no official dealer. Respondent therefore lacks a legitimate interest in using the contested domain name (cf. Panel decision in WIPO Case No. D2001-0550, <porsche-cup.com>).

Respondent offers identical products and services (travel) through the website operated under the contested domain name.

The Respondent is not commonly known by the domain name (paragraph 4(c)(ii).

He is not making noncommercial use of the domain name (paragraph 4(c)(iii).

The Respondent has registered and uses the disputed domain name in bad faith.

Under no conceivable circumstances the Respondent could have acted in good faith. He has no legitimate interest in registering and using such a well known and prestigious trade name and trademark as an element of a domain name. Respondent chose a domain name commonly known as the name of Complainant’s Filderstadt Tennis tournament to mislead users and keep them away from the official website just like he does with other well known tennis events. The plan is to attract users who seek information from and about the Complainant.

Respondent registered the domain name to promote its sales and travel services business.

This is a case of general bad faith and of paragraph 4(b)(iv) UDRP.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, the Complainant must prove each of the following:

(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 said domain name; and

(iii) The domain name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant contends that the domain name <porschetennis.com> is confusingly similar to the registered trademark "Porsche".

It is uncontested that the Complainant is the holder of the registered trademark "Porsche", which obviously is identical with the first part of the disputed domain name. The question to be answered is if the additional word "tennis" is sufficient to distinguish the domain name from the trademark. It has previously in other cases involving among others the trademark "Porsche" been held that a suffix, in the form of a general term, will not be a distinctive element that may distinguish the domain name from the trademark, cf. Panel decision WIPO Case No. D2001-0919, <porscheimporter.com> and WIPO Case No. D2001-0993, <porsche-usa.com>). The Administrative Panel finds that the word "tennis" is a generic term and therefore not a distinctive element for a trademark.

The Panel further agrees with the Complainant that the extension indicating the Top level domain ".com" is irrelevant.

Accordingly, the Administrative Panel finds that the first element of the Policy is satisfied.

B. Rights or Legitimate Interests

It is held by Complainant that Respondent does not have any right or legitimate interest in respect of the domain name. There has never been a business relationship between the parties and the Respondent is not an official dealer of Porsche products. These facts are not disputed by Respondent; in fact Respondent has failed to reply to Complainant’s contentions. There are no other circumstances presented to the Panelist which could support the view that Respondent has any contractual rights to use the trademark as a domain name. Further, there is no evidence, which could support the view that Respondent has legitimate interests in the domain name. In this respect, the Administrative Panel first points out that the domain name was registered at a much later date than the registration of the "Porsche" trademarks. The "Porsche" trademark was registered in 1953 in Germany and in 1956 in the U.S. The domain name in dispute was not registered before August 9, 2001.

Neither is there any evidence that could support the view that, under the Rules paragraph 4(c)(ii), Respondent has been commonly known by the domain name. As held by Complainant, Respondent is known under the name of GoTennis and Sportwave.

Accordingly, the Administrative Panel finds that Respondent does not have rights or legitimate interests in respect of the domain name and that the second condition of the Policy is proved.

C. Registered and Used in Bad Faith

The third element to be established by Complainant is that the Domain Name has been registered and used in bad faith.

Paragraph 4(b) states the following four (non-exclusive) circumstances which, if found to be present, are deemed to provide evidence of bad faith in registering and using the Domain Name:

"(i) circumstances indicating that you [Respondent] have registered or you [Respondent] have acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant who is the owner of the trademark or service mark, or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Domain Name; or

(ii) you [Respondent] have 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 you have engaged in a pattern of such conduct; or

(iii) you [Respondent] have registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Domain Name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or your location."

The Respondent has registered several domain names related to tennis and tennis tournaments. The idea seems to be that users shall be lead to Respondent’s website through domain names that have incorporated the names of well known tennis tournaments. Respondent makes use of the fact that some tennis tournaments are known by other than their traditional names and that many users hope to find the official homepage by better known colloquial names. Some other domain names consist of misleading; some even of completely unrelated generic names intended to lure visitors who are looking for something else.

Respondent’s website is loaded with commercial advertising by Respondent’s sponsors. A link called "Ticket and Tours" directs the user to <tennistours.com> where Respondent’s travel services are promoted. Through the link to "Pro Shop" the visitor is directed <gotennisshop.com> where various products are offered for sale, such as tennis related products, including clothing, tennis rackets and balls. Respondent’s website further contains "Advertising and Sponsorship Packages" (Annex 27).

The Administrative Panel finds that the Complainant has proved that the Respondent has registered and used the disputed domain name in an attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

On this basis, the Administrative Panel concludes that the third element as required by paragraph 4 of the Policy is proved.

 

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 <porschetennis.com> be transferred to the Complainant.

 

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Arne Ringnes
Sole Panelist

Date: March 12, 2003