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Designer Skin LLC v. S & L Vitamins, Inc., et al.
Unauthorized internet reseller of plaintiff’s products is not guilty of trademark infringement, and does not cause actionable initial interest confusion, by using plaintiff’s trademarks in meta tags of website at which plaintiff’s and its competitors’ products are sold, and in...

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Dr. Ing. h.c.F. Porsche AG v. Del Fabbro Laurent

Case No. D2004-0481 (WIPO, August 20, 2004)

In this domain name dispute brought under the Uniform Domain Name Dispute Resolution Policy (UDRP), the Panel held that Respondent can continue, despite Complainant's objections, to use Complainant's "Porsche" mark in the domain names of web sites that advertise used Porches for sale by third parties.  Such use was held to create a legitimate interest in those domain names sufficient to defeat Complainant's UDRP claims, given that Respondent's web sites featured prominent disclaimers, stating they were neither authorized by, nor affiliated with, Complainant, and given further that only advertisements for used cars manufactured by Porsche were permitted on the web sites at issue.

Complainant Dr. Ing h.c.F. Porsche AG ("Porsche") is a company domiciled in Germany which manufactures sports cars under the trademark "Porsche."  Complainant is the owner of numerous trademark registrations for the "Porsche" mark throughout the world, which mark it uses in a web site it operates at the domain

Respondent is the registrant of the domains and  Respondent operates web sites at these domains at which users are invited to view car offers, or place car ads, for used Porsches.  Ads are not accepted for cars made by any other manufacturer.  No fees were charged either to those who posted, or read, the car  ads found on the sites.

Respondent's sites contained a disclaimer, stating that they are "not sponsored by, authorized by, not sanctioned by" Porsche, which disclaimer was posted prior to the receipt of any complaint from Complainant.

Respondent's sites contain links to other sites operated by Respondent at the domains, and, at which sites are offered for sale, respectively, Ferraris, Jaguars and race cars.

Porsche commenced this UDRP proceeding to compel Respondent to transfer the Porschebuy domain names.  The Panel denied Porsche's application, finding Respondent had a "legitimate interest" in those domain names.

The Panel found that the domain names at issue were confusingly similar to Porsche's mark, and hence that Porsche had met the first prong of the three part showing required for relief under the UDRP.  The addition of the word "buy" to a domain name containing Complainant's mark in its entirety did not dispel any such confusion.

However, the Panel found that Respondent had a "legitimate interest" in the domain name sufficient to defeat Porsche's UDRP application.

The Panel adopted and applied the four part test enunciated in Oki Data v. ASD, WIPO Case No. D2001-0903 (2001) to determine if Respondent's use was legitimate.  Under this test, to establish a legitimate interest in the domain name, Respondent must show that Complainant's goods and services, and only Complainant's good and services, are sold at the web site operated at the domain name at issue; the site operated there accurately discloses respondent's relationship with the mark holder; and respondent has not cornered the market on domain names containing the holder's mark.

The Panel found Respondent met this burden.  Respondent used the sites to offer Complainant's goods - namely used Porsches; only used Porsches were sold at the sites and not cars manufactured by any third parties; the sites contained a disclaimer, clearly stating they were not affiliated with, nor sponsored by, Porsche, and Respondent had only registered two domains containing Porsche's mark, and had not thereby cornered the market in Porsche domains.

The presence of links to other sites, on which the cars described in the domain names of those sites could be found, did not alter this result.  Said the Panel:

Clearly designated links to web sites, under which other brands or  products are offered, cannot be considered as the offering of other brands or products under the Domain Names, provided they take up only a minor part of the site and the overall impression of that site remains that of a site offering corresponding goods.

Accordingly, the Panel determined that Respondent had a legitimate interest in the domain names in dispute, and resolved this domain name dispute by denying Porsche's request for relief under the UDRP.  In so doing, the Panel stated:

Under the present facts if the Panel were to find in favour of the Complainant, the Panel can conceive of no case in which a party interested in the sale of certain used goods could ever register a domain name descriptive of, at least to a certain reasonable extent, that business.

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