Complainant is Formula One Licensing B.V. of Amsterdam, Netherlands, represented by Wild Schnyder AG, Switzerland.
Respondent is H. Altun of Winschoten, Netherlands.
The disputed domain name <fone1drinks.com> is registered with Tucows Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2009. On December 23, 2009, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On December 23, 2009, Tucows Inc. transmitted by email to the Center its verification response confirming that 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” or “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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 4, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 24, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on January 25, 2010.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on February 19, 2010. 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.
Complainant is the holder of the international figurative trademark F1, registered under number 845571 on July 13, 2004 for classes 01, 03, 04, 07, 08, 09, 11, 12, 14, 16, 18, 21, 24, 25, 28, 29, 30, 32, 33, 34, 35, 36, 38, 39, 41, 42 and 43. This trademark is granted protection in Moldova, Monaco, Mongolia, Morocco, Poland, Portugal, Romania, the Russian Federation, San Marino, Serbia, Singapore, The Slovak Republic, Slovenia, Spain, Switzerland, Tajikistan, Ukraine, the United Kingdom of Great Britain and Northern Ireland and Uzbekistan.
It is stated in the WhoIs records that H. Altun, Respondent in the instant case, is the current holder of the disputed domain name <fone1drinks.com>, which it registered on July 10, 2009 with Tucows, Inc.
The website that is linked to the disputed Domain Name was, at the time the Complaint was filed, being used for advertising an energy drink under the name Fone1. The website also showed a logo comprising the letter “F” and number “1”, written together in big black letters with the word “one” in between those two letters in smaller white characters.
According to Complainant the domain name of Respondent is identical or confusingly similar to the trademarks of Complainant. Complainant argues that its trademarks are basically identical to the disputed domain name. According to Complainant, the only difference is that between the “F” and the “1” an element “one” is added. Complainant asserts that combining the well-known trademark F1 with the element “one” does not change the element F1 at all.
Complainant asserts that Respondent has no right or legitimate interest in the disputed domain name. Complainant argues that the domain name was registered by Respondent on July 10, 2009 only, and that this was long after the F1 trademarks had become well-known. According to Complainant, there is no evidence that Respondent is or was commonly known by any trademark “Fone1” nor is there any evidence that Respondent is making a legitimate commercial or noncommercial use of the domain name. Furthermore, Complainant argues that it never gave consent to such use. Complainant argues that Respondent must have known Complainant's trademark at the time of registering the disputed domain name.
Finally, Complainant argues that the disputed domain name was registered and is being used in bad faith. Complainant mentions that a screenshot of the website of December 21, 2009 shows that Respondent was advertising an energy drink under the name “Fone1”. According to Complainant it is common knowledge that energy drink brands are important sponsors of F1 racing. In addition to the graphic elements, Complainant argues that Respondent is using sound and motion clearly connected with the F1 racing events, and therefore is trying to disrupt Complainant's business and to attract customers who will be under the wrong impression that such conduct is under the sponsorship, affiliation or endorsement of Complainant.
Respondent did not reply to Complainant's contentions.
Paragraph 15 of the Rules provides that the panel is to decide the complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The onus is on the complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that the complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer or cancel a domain name.
Thus for a Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy:
1. The domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
2. respondent has no rights or legitimate interests in respect of the domain name; and
3. The domain name has been registered and is being used in bad faith.
The Panel will therefore deal with each of these requirements in turn.
Complainant must first establish that there is a trademark or service mark in which it has rights.
Complainant shows that it is the holder of the international figurative trademark F1, for which protection is granted in various countries and for a wide range of goods, including non-alcoholic beverages in class 32 and alcoholic beverages in class 33.
The Panel considers the disputed domain name <fone1drinks.com> to be composed of the non-distinctive generic terms “one” and “drinks” and a term identical to the F1 trademark. The Panel is of the opinion that the mere addition of non-distinctive text to a complainant's trademark constitutes confusing similarity, as set out in paragraph 4(a)(i) of the Policy (see Formula One Licensing B.V. v. Ismail Altunzade, Goldzade CV, WIPO Case No. D2009-0797, where the domain name <f-one-1.com> was considered to be confusingly similar to the F1 trademark; see Formula One Licensing B.V. v. Holding Theunisse, WIPO Case No. D2008-1631 and Formula One Licensing B.V. v. Louis Theunisse, WIPO Case No. D2008-1633, where the domain names <f1energydrinks.com> and <f1drinks.com> were held to be confusingly similar to the F1 trademark; see also Lime Wire LLC v. David Da Silva/Contactprivacy.com, WIPO Case No. D2007-1168, where the domain name <download-limewire-now.com> was held to be confusingly similar to the LIME WIRE trademark, especially with addition of the word “download” because users typically download complainant's software; International Business Machines Corporation v. Scot banner, WIPO Case No. D2008-0965, where the domain name <ibmdownload.com> was held to be confusingly similar to the IBM trademark because many Internet users would assume that the Domain Name identifies a website from which they can download software supplied by the Complainant; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070, where the addition of the words “mail”, “post”, “fan” and “top50” to the POKÉMON in the disputed domain names was held to be of minimal impact on what the visitor of the website focuses on, namely the POKÉMON mark; Nintendo of America v. Gray West International, WIPO Case No. D2000-1219, where it was held that the addition of the word “games” in the domain name did nothing to reduce its confusing similarity to Nintendo's POKÉMON marks); Dr. Ing. h.c. F. Porsche AG v. Kentech, Inc. a.k.a. Helois Lab a.k.a. Orion Web a.k.a. Titan Net a.k.a. Panda Ventures a.k.a. Spiral Matrix and Domain Purchase, NOLDC, Inc., WIPO Case No. D2005-0890, where the domain name <porsche-repair-parts.com> was held to be confusingly similar to the trademark PORSCHE).
The addition of the non-distinctive terms “one” and “drinks” does nothing to reduce the confusing similarity of the disputed domain name with Complainant's trademark. Moreover, the disputed domain name is likely to make Internet users assume that the website that is linked to the domain name promotes energy drinks supplied by the Complainant. Therefore, the Panel considers the disputed domain name to be confusingly similar to Complainants trademark F1.
Accordingly, Complainant has made out the first of the three elements that it must establish.
Under paragraph 4(a)(ii) of the Policy, Complainant has the burden of establishing that Respondent has no rights or legitimate interests in respect of the domain name.
It is established case law that it is sufficient for Complainant to make a prima facie case showing that Respondent has no right or legitimate interest in the disputed domain name in order to shift the burden to Respondent. (See Champion Innovations, Ltd. v. Udo Dussling (45FHH), WIPO Case No. D2005-1094 (championinnovation.com); Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 (<croatiaairlines.com>); Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110 (<belupo.com>)).
The Panel notes that there is no evidence in the present record to establish that Respondent has been commonly known by the disputed domain name and that Respondent apparently has not acquired trademark or service mark rights in any “Fone1” mark. Respondent's use and registration of the disputed domain name was not authorized by Complainant. There are no indications that a connection between Complainant and Respondent has ever existed.
Moreover, the Panel is of the opinion that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
Based on the evidence provided by Complainant, Respondent promoted or intends to promote “Fone1” energy drinks, as appears from a screenshot of the website connected to the disputed domain name, by reference to a racing environment. On the website a logo is shown that is very similar to Complainant's figurative F1 trademark. In displaying such content, Respondent makes use of the likelihood of confusion with the trademark of Complainant, which can neither be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name (see Philip Morris USA Inc. v. ADN HOSTING, WIPO Case No. D2007-1609, where the use of a mark in the domain name to confuse customers and induce them to buy counterfeit products was found to evidence an absence of rights or legitimate interests).
As a result, Complainant has made a prima facie showing that Respondent has no right or legitimate interest in the disputed domain name, which Respondent has not rebutted.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith (see e.g. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd, WIPO Case No. D2006-1052).
Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. Among these factors demonstrating bad faith is the use of a domain name to intentionally attempting to attract, for commercial gain, Internet users to a web site 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 web site or location or of a product or service on your web site or location.
In the instant case, Respondent must have had knowledge of Complainant's rights in the F1 trademark, since Complainant's F1 trademark is well-known and was registered many years prior to the registration of the disputed domain name. Moreover, Respondent's website depicted an “Fone1” sign which resembled the figurative F1 trademark of Complainant.
Moreover, the disputed domain name was registered shortly before the decision in WIPO Case No. D2009-0797 was released, whereby the transfer of the domain name <f-one-1.com> was ordered to Complainant in the present case. The respondent in WIPO Case No. D2009-0797 has the same address of Respondent in the present case. Therefore, it is highly unlikely that Respondent was unaware of WIPO Case No. D2009-0797 in which Complainant's rights were recognized and the transfer of the domain name <f-one-1.com> was ordered. By registering the disputed domain name, which is very similar to a domain name that was highly likely to be found to be confusingly similar to Complainant's established trademark rights, there can be no doubt that the domain name in this case was registered in bad faith.
Additionally, the Panel finds that Complainant's F1 trademark is widely known in the field of energy drinks, and is commonly advertised in connection with Complainant's racing events. Accordingly, the Panel finds that Respondent registered the disputed domain name with actual knowledge of Complainant's mark.
Moreover it is established that Respondent registered and used the disputed domain name, including Complainant's trademark, for the purpose of intentionally attracting users to Respondent's website for commercial gain by suggesting that Respondent's website is affiliated with, or endorsed by, Complainant. Such use constitutes bad faith according to paragraph 4(b)(iv) of the Policy (see Milwaukee Radio Alliance, L.L.C. v. WLZR-FM LAZER 103, WIPO Case No. D2000-0209, where it was held that there was bad faith where a domain name holder sought to create an “‘initial confusion' on the part of Internet users with regard to the source of the domain name”; Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102, where it was held that respondent was taking a free ride on the goodwill of complainant's trademark through the use of a domain name aiming at creating traffic to its website).
These circumstances support a finding of bad faith registration and use pursuant to paragraph 4(b)(iv) 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 disputed domain name <fone1drinks.com> be transferred to Complainant.
Flip Jan Claude Petillion
Dated: March 5, 2010