WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Formula One Licensing B.V. v. Domains by Proxy, Inc., Crown Group International , - Protected -
Case No. D2011-1106
1. The Parties
The Complainant is Formula One Licensing B.V. of Netherlands, represented by Wild Schnyder AG, Switzerland.
The Respondent is Domains by Proxy, Inc. of United States of America, Crown Group International of Panama and, Protected of Zimbabwe, self represented.
2. The Domain Names and Registrar
The disputed domain names <f1showcar.com>, <f1showcar.net> and <f1showcars.com> are registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 30, 2011. On June 30, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On July 4, 2011, GoDaddy.com, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 6, 2011, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on July 11, 2011. The Center verified that the Complaint together with the amendment to 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 the Respondent of the Complaint, and the proceedings commenced on July 12, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 1, 2011. The Response was filed with the Center on July 31, 2011.
The Center appointed Nicholas Weston as the sole panelist in this matter on August 16, 2011. 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 operates a motor vehicle racing business which operates in more than 17 countries. The Complainant holds numerous registrations for the trademark F1 in 68 countries including the following examples:
May 24, 1996
Austria, China, Czech Republic, Denmark, Egypt, Finland, France, Germany, Hungary, Italy, Republic of Korea, Liechtenstein, Monaco, Norway, Portugal, Russian Federation, Singapore, Spain, Switzerland, Turkey.
Dec 20, 1999
3, 4, 9, 12, 14, 16, 18, 21, 24, 25, 26, 28, 30, 34, 35, 38,
United States of
America, among others.
Sep 22, 2006
Complainant and an affiliate company, Formula One World Championship Limited (“FOWC”), use the trademark for motor races known as the FIA FORMULA ONE WORLD CHAMPIONSHIP, which is regulated by the Federation Internationale de l'Automobile (“FIA”), which established the Championship in 1950.
Complainant or related companies own the domain name <F1.com> and a number of other domain names which incorporate the trademark F1.
Respondent registered the domain names <f1showcars.com> on December 3, 2003, < f1showcar.com> on December 18, 2004, and <f1showcar.net> on March 24, 2005, (the “Disputed Domain Names”).
In this case, when the Disputed Domain Names <f1showcars.com> or alternatively <f1showcar.net> are typed in, each redirects traffic to <f1showcar.com> which page contains information offering for sale replicas and simulators of cars used in the FIA Formula One World Championship. On July 29, 2011, the Respondent confirmed by email to the Complainant that “we are offering for sale various cars on our website”.
5. Parties’ Contentions
The Complainant cites its trademark registrations of the trademark F1 in various countries as prima facie evidence of ownership.
The Complainant submits that the mark F1 is well-known and that its rights in that mark predate the Respondent’s registration of the Disputed Domain Names. It submits that the Disputed Domain Names are confusingly similar to its trademark, because each Disputed Domain Name incorporates in its entirety the F1 trademark (citing EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc. WIPO Case No. D2000-0047) and that the similarity is not removed by the addition of the descriptive terms “showcar” or “showcars”.
The Complainant contends that “Respondent makes very aggressive reference to Complainant’s motor sport themes on the website itself” but that the “Respondent is not an authorized re-seller, has no license from Complainant and does not sell Complainant’s trademarked goods under the infringing websites. As a consequence, the Complainant contends, the Respondent “fails to demonstrate that it has rights or legitimate interests in the domain names”.
Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy, paragraphs 4(a)(iii) and 4(b) and the Rules, paragraph 3(b)(ix)(3), as “Respondent clearly abuses the trademark F1 as a domain name element to attract visitors and clients for their website”.
The Respondent contends that
(a) “F1 is a common term and belongs to no one.”
(b) “In our domain F1 means (computer keyboard) Function 1.”
(c) It does “not offer for sale any kind of Formula One cars” or “related items.”
(d) It does “not offer for sale any kind of brands neither trademarks, logos on our cars” and does “not put any kind of trademarks on custom made race cars.”
(e) It is acting in “good faith in this business” as to view its website a web user “must see and accept our statement and disclosure (as other customers must do). We are not providing any kind of misleading information about our website neither about our products for the public.”
(f) “Any potential mention on the website to other brand names and/or products is made for comparison, educational or novelty purposes only.”
(g) “Our logo has nothing to do with any other brands, absolutely unique. We use our products' name and website name as a trademark in one word like no other company does: F1showcarT. It is our own trademark” (citing a United States Court decision: PRL USA Holdings, Inc. v. United States Polo Ass’n, Case No. 06-3691-cv (2nd Cir. March 4, 2008).
(h) “There are more additions to understand why we declare the F1 is a common, generic abbreviation and we are using it with good faith. Please take the following examples:”
“Office Assistant F1 - http://en.wikipedia.org/wiki/F1_%28Office_Assistant%29
F1 hybrid - http://en.wiktionary.org/wiki/F1_hybrid
F-1 (rocket engine) - http://en.wikipedia.org/wiki/F1_%28rocket_engine%29
Fujita Tornado Damage Scale - http://www.spc.noaa.gov/faq/tornado/f-scale.html
One of the largest television companies of France: http://www.tf1.fr/
What else the F1 could be: Freight 1, Free 1, Function 1, Ferry 1, Fabric 1, Fabulous 1 etc…”
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the complainant has the burden of proving the following:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The propriety of a domain name registration may be questioned by comparing it to a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358). The Panel finds that the Complainant has rights in the mark F1 in France pursuant to French Registration No. 96627464 registered from May 24, 1996.
Turning to whether the Disputed Domain Name is identical or confusingly similar to the F1 trademark, the Panel observes that each Disputed Domain Name comprises (a) an exact reproduction of the Complainant’s trademark F1 followed by (b) the word “showcar” or in the alternative “showcars” and (c) the top level domain suffix “.com” or alternatively “.net” all in one continuous domain name respectively.
It is well-established that the top-level designation used as part of a domain name should be disregarded: (see Hoffmann-La Roche Inc. v. Andrew Miller, WIPO Case No. D2008-1345). The relevant comparison to be made is with the second-level portion of the Disputed Domain Name: “F1showcar” or “F1showcars”.
It is also well-established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it is confusingly similar to that mark despite the addition of a word such as, in this case, “showcar” (or its plural, the word “showcars”): (see Wal-Mart Stores, Inc. v. Kuchora, Kal, WIPO Case No. D2006-0033).
The Respondent contends that “F1 is a common, generic abbreviation”, that it does “not offer for sale any kind of Formula One cars” or “related items” and that it does “not offer for sale any kind of brands neither trademarks, logos on our cars” adding that to view its website a web user “must see and accept our statement and disclosure (as other customers must do). We are not providing any kind of misleading information about our website neither about our products for the public.” In considering the elements of paragraph 4(a) of the Policy, the contents of a website (which is the direct manifestation of the potential uses of the domain name, and the Respondent’s intentions) are not relevant. In Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698, the panel held that “[t]he use to which the site is put has no bearing upon the issue whether the domain name is confusingly similar to the trademark, because by the time Internet users arrive at the Website, they have already been confused by the similarity between the domain name and the Complainant’s mark into thinking they are on their way to the Complainant’s Website”. The Disputed Domain Names are therefore confusingly similar to the F1 trademark.
Accordingly, the Panel finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or a legitimate interest in the disputed domain name:
(i) before any notice of the dispute, respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Policy places the burden on the complainant to establish the absence of respondent’s rights or legitimate interests in the disputed domain name. Because of the inherent difficulties in proving a negative, the consensus view is that the complainant need only put forward a prima facie case that the respondent lacks rights or legitimate interests. The evidential burden then shifts to the respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles, WIPO Case No. D2000-1306; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 2.1.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of each Disputed Domain Name because each is misleadingly directing Internet users to a page containing motor racing car replicas and simulators in connection with the Complainant’s mark and thereby attempting illegitimately to trade “the Respondent intentionally attempts to attract for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainants’ mark. The public may believe that the services are rendered or authorized by Complainant or an affiliated company within the Formula One Group.” The Complainant also has not licensed, permitted or authorized the Respondent to use the Complainant’s trademark. Use that intentionally trades on the fame of another cannot constitute a bona fide offering of goods or services (See: Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com”, WIPO Case No. D2000-0847). The Complainant provided evidence that typing in the Disputed Domain Names diverts traffic to a website for replicas and simulators of racing cars.
The Response does not appear to allege the existence of any rights or legitimate interests within the meaning of paragraphs 4(c)(i), (ii) or (iii) of the Policy. The Respondent does contend that he has used the Disputed Domain Names in connection with a bona fide offering of goods and services before notice of the dispute. However, on any objective view, the Respondent is not a reseller with a legitimate interest in a domain name incorporating a manufacturer's mark, such that it could meet the tests set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. Nor, alternatively, is the Respondent commonly known by the Disputed Domain Names, or alternatively, that it is making a legitimate non-commercial use of the Disputed Domain Names.
The Respondent submits that the word F1 “is a common, generic abbreviation” and provides some alternative meanings for the letter combined with number “F1” without advancing any coherent reason for the remarkable coincidence that it is offering for sale goods or services related to the goods and services covered by some of the Complainant’s trademarks. Relevant to the issue of non-commercial use, the Respondent submits: “we are offering for sale various cars on our website.” These arguments by the Respondent actually advance the Complainant’s case.
This Panel finds that the Respondent is making a non legitimate commercial use of the Disputed Domain Names. By misleadingly diverting consumers, it can be inferred that the Respondent is opportunistically using Complainant’s marks in order to attract Internet users to its website and has been using the infringing domain names to sell race cars and related services.
The Panel finds for the Complainant on the second element of the Policy.
C. Registered and Used in Bad Faith
The third element of the Policy that the complainant must also demonstrate is that the disputed domain name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both.
“b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, (relevantly):
ii. you 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 have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
iv. by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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.”
The evidence that the Respondent registered and has used the Disputed Domain Names in bad faith is overwhelming. The Respondent contends that the mark F1could have many other meanings besides Formula 1 but does not argue that it is a dictionary term. The Respondent does not admit or deny actual knowledge of the Complainant’s activities, trademark or its secondary meanings at the time of the registration.
The trademark F1 is so well-known a mark for motor racing that it would be inconceivable that Respondent might have registered the mark without knowing of it (see Formula One Licensing BV v. HyeongJeon, Gim, WIPO Case No. D2004-0210; Formula One Licensing B.V. v. Holding Theunisse, WIPO Case No. D2008-1631; Formula One Licensing B.V. v. Louis Theunisse, WIPO Case No. D2008-1633; Formula One Licensing B.V. v. N/A, WIPO Case No. D2009-0217; Formula One Licensing B.V. v. Holding Theunisse, WIPO Case No. D2009-0760; Formula One Licensing B.V. v. H. Altun, WIPO Case No. D2009-1772).
Further, the fact that Respondent registered both ".net" and ".com" domain names is also evidence of its desire to divert as many potential Internet users as possible (see: Estée Lauder Inc. v. estelauder.com, estelauder.net and Jeff Hanna, WIPO Case No. D2000-0869).
Exploitation of the reputation of a trademark to obtain clients from the diversion of Internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous decisions. (see L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 and Hoffmann-La Roche Inc. v Samuel Teodorek, WIPO Case No. D2007-1814).
This Panel finds that the Respondent must have been aware of the relevant trademark. This Panel finds that the Respondent has taken the well-known trademark F1 and incorporated it into each of the Disputed Domain Names without the Complainant’s consent or authorization, for the very purpose of capitalizing on the reputation of the trademark by diverting Internet users for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 domain names, <f1showcar.com>, <f1showcar.net> and <f1showcars.com> be transferred to the Complainant.
Dated: August 30, 2011