WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Force India Formula One Team Limited v. Mandeep Singh Dhingra
Case No. D2012-1102
1. The Parties
The Complainant is Force India Formula One Team Limited of Northampton, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”) represented by Travers Smith LLP, United Kingdom.
The Respondent is Mandeep Singh Dhingra of Hyderabad, Andhra Pradesh, India, represented by Domain Name Disputes India.
2. The Domain Names and Registrar
The disputed domain names <saharaforceindia.com> and <saharaforceindiaf1.com> (the “Disputed Domain Names”) are registered with Domain.com, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 28, 2012. On May 29, 2012, the Center transmitted by email to Domain.com, LLC a request for registrar verification in connection with the Disputed Domain Names. On May 30, 2012, Domain.com, LLC transmitted by email to the Center its verification response confirming that the 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”), 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 May 31, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 20, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 26, 2012.
The Center appointed Philip N. Argy as the sole panelist in this matter on July 4, 2012. The Panel finds that it was properly constituted. The Panel submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. All other administrative requirements appear to have been satisfied.
On July 14, 2012 the Panel submitted its decision to the Center for formatting. Before that process had been undertaken, the Respondent sought an extension of time to file the Response and claimed that his inability to do so earlier was due to two family bereavements. On July 17, 2012, the Panel granted the Respondent an extension of 15 days within which to file a Response on compassionate grounds due to his family bereavements. Noting that the time to file a Response under the Rules had long passed, the time for the filing of a Response was extended until 5pm Hyderabad time on August 1, 2012 on condition that the Respondent take no steps to point the Disputed Domain Names to any website, nor to use them for any email purposes, until such time. In granting that extension, the Panel noted that the Response was to be limited to addressing the substantive arguments made in the Complaint as to UDRP paragraphs 4(a) to (c).
Less than 24 hours before the extended time for the filing of a Response was due to expire, the Center received a communication from Domain Disputes India attaching a letter showing that they had been engaged by the Respondent that day to prepare and file a Response, and that the Respondent’s inability to do so within the extended time period was due to undisclosed “personal sensitive issues”. The Respondent’s counsel sought an additional “one-time last extension” of unspecified duration.
Despite the Respondent now having had in excess of two months to prepare a Response to the Complaint, the Panel granted the requested “one-time last extension” and allowed the Respondent until 5pm Hyderabad time on Thursday, August 2, 2012 to file a Response, otherwise on the same conditions that had been imposed in respect of the first extension of time.
Shortly before the expiration of the second extension period, a substantive Response was lodged. The Panel issued a consequential order extending the time within which this decision should be rendered until 5pm Geneva time on Friday, August 10, 2012.
4. Factual Background
The following facts, taken from the Complaint, remain uncontested:
Since 2007 the Complainant has used the trademark FORCE INDIA in relation to its Formula One motor car racing team based in Silverstone, United Kingdom. It first applied to register FORCE INDIA as a trademark in the United Kingdom on November 12, 2007 and subsequent applications under the Madrid Protocol have been accorded that priority date. In addition to the obvious registration in class 12 for motor vehicles, the Complainant also holds various FORCE INDIA registrations in multiple jurisdictions in classes 3, 4, 6, 7, 8, 9, 11, 14, 16, 18, 20, 21, 22, 24, 25, 28, 29, 30, 32, 33, 34, 35, 36, 38, 39, 41, 42 and 43 covering a wide range of merchandise and services. From April 2012 the Complainant also sought similar trademark registrations for SAHARA FORCE INDIA although, unlike the standard word marks the subject of the FORCE INDIA registrations, these applications were usually for heavily stylized versions of the words “Sahara”, “Force” and “India” – essentially reflecting the form of logo that the Complainant uses.
The SAHARA trademark has been owned and registered by Sahara India since 1987 and is a very well-known brand in India.
From November 2007 until October 11, 2011 the Complainant’s racing team was known as “Force India Formula One Team”. On October 12, 2011 the Complainant publicly announced that, as a result of its corporate affiliation with Sahara Adventure Sports Limited, its team would henceforth be known as “Sahara Force India F1 Team”. From that date the Complainant began using SAHARA FORCE INDIA as its brand and its motor racing team became known as “Sahara Force India F1 Team”.
The Disputed Domain Names were both registered on October 12, 2011. This came to the Complainant’s notice as soon as it tried to reflect “Sahara Force India F1” in a domain name on October 14, 2011.
5. Parties’ Contentions
After discovering the Respondent’s registrations of the Disputed Domain Names, the Complainant immediately offered the Respondent INR 8,000 to buy the Disputed Domain Names but this offer was refused. The following day the offer was “sweetened” by the addition of a pair of free domestic air tickets with Kingfisher Airlines, and an all-expenses paid attendance for two people at the Singapore Grand Prix in 2012. These offers were likewise rejected by the Respondent. The Respondent and his wife were also afforded significant hospitality by the Complainant during the 2011 Indian Grand Prix. Subsequently, in December 2011, the Respondent indicated that he would transfer the Disputed Domain Names to the Complainant for USD 7,000. The Complainant then offered USD 10,000 for the Disputed Domain Names together with four other domain names registered by the Respondent being <saharaforceindia.in>, <saharaforceindiaf1.in>, <saharaforceindia.co.in> and <saharaforceindiaf1.co.in>. This offer was accepted by the Respondent but, before that agreement could be completed, the Complainant decided to instigate proceedings instead. Curiously, on March 22, 2012 the Complainant then offered the Respondent USD 4,000 for the Disputed Domain Names together with the four Indian domain names. The Respondent refused this offer.
The Complaint is based on the three primary grounds set out in paragraph 4(a) of the Policy, namely:
(i) That the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) That the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and
(iii) That the Disputed Domain Names were registered and are being used in bad faith.
In support of ground (i) the Complainant submits that the Disputed Domain Names both contain its registered trademark FORCE INDIA, its common law mark SAHARA FORCE INDIA, and also the SAHARA trademark owned by Sahara India (which holds 42.5% of the equity in the Complainant’s parent company). The Complainant owns and uses both for its primary website and for its email, the domain <forceindiaf1.com>.
In support of ground (ii) the Complainant notes that it has been unable to find any actual use or preparations to use the Disputed Domain Names by the Respondent, and they do not resolve to any website. Nor is the Respondent known by any name resembling the Disputed Domain Names and he is not carrying on any business related to the Disputed Domain Names. So far as can be determined, the sole purpose in registering the Disputed Domain Names was to obtain a commercial gain by selling them to the Complainant.
In support of ground (iii) the Complainant relies on paragraph 4(b)(i) of the Policy on the basis that the Respondent appears to have registered the Disputed Domain Names solely to obtain a commercial gain by selling them to the Complainant.
The Respondent’s lawyers did a most remarkable job in compiling and filing a substantial Response within 24 hours of being instructed by the Respondent. His submissions can be summarized as follows:
1. The Respondent has been a keen motor sport enthusiast since 1996 and also operates a chain of driving schools (see “www.hindmotortraing.com”);
2. He has been a champion kart racer and has aspirations to F3 and F1 participation;
3. He maintains a Facebook “fan page” entitled “Speedway Motor Sports ¼ Mile Drag” which discusses current events in the world of motor sports, primarily drag racing but also covering bikes, touring cars, rallying and other motor sport categories. The Facebook page complements the website that the Respondent maintains at “www.speedwaymotorsports.in”;
4. The Complainant had no trade mark rights in SAHARA FORCE INDIA as at October 12, 2011;
5. The Complainant was not and is not known as SAHARA FORCE INDIA;
6. The Respondent’s intention was to create a Formula One Facebook fan page, and a complementary website to which the Disputed Domain Names would point;
7. The Respondent had “demonstrable intentions” to put the Disputed Domain Names into use before he chose not to host the website due to threats made by the Complainant; and
8. The Respondent did not seek to profit from registration of the Disputed Domain Names.
6. Discussion and Findings
The Complainant bears the onus of proving each of the grounds of paragraph 4(a) of the Policy set out in section 5A above.
A. Identical or Confusingly Similar
Despite the Respondent’s assertions to the contrary, it is perfectly clear that at least as at the date of the Complaint, the Complainant was using SAHARA FORCE INDIA as the name of its Formula One racing team.
The Wayback Machine (“www.archive.org”) shows that the name in use at “www.forceindiaf1.com” up until its last capture in July 2011 was FORCE INDIA with this heavily stylized trade mark:
The current version of that website shows the logo in this form:
There is no doubt that the Disputed Domain Names embody both the FORCE INDIA registered trademarks, and the SAHARA FORCE INDIA common law trademarks of the Complainant. As those marks are used primarily but by no means exclusively in relation to Formula One motor racing, the inclusion of F1 in the second of the Disputed Domain Names does nothing to reduce the confusing similarity which both Disputed Domain Names have with the Complainant’s marks, especially in view of the Complainant’s use of F1 in its own domain name. The Panel comfortably finds both Disputed Domain Names to be confusingly similar to both the Complainant’s registered FORCE INDIA trademark and its SAHARA FORCE INDIA common law mark. The first of the Disputed Domain Names <saharaforceindia.com> is also regarded by the Panel as identical to the Complainant’s SAHARA FORCE INDIA common law mark once the spaces are eliminated and the gTLD is ignored, as one does in such cases.
The Panel does not regard the Disputed Domain Names as being identical or confusingly similar to Sahara India’s SAHARA mark alone and, in any event, Sahara India is not a party to these proceedings - its rights in that mark are of no relevance to any issue the Panel has before it under the Policy.
B. Rights or Legitimate Interests
The timing of registration and the text of the Disputed Domain Names is consistent only with opportunistic registration. As the Respondent concedes, he registered the Disputed Domain Names immediately upon learning of Sahara’s acquisition of equity in the Complainant. As a motor sport enthusiast one would expect the Respondent to be close to those in the industry and to be very conversant with the Complainant. Whilst the evidence isn’t strong, it suggests that up to a week before the official announcement there were rumors circulating about Sahara’s likely investment in the Force India team. The Respondent’s registration of the Disputed Domain Names, as well as the four similar domain names in the Indian ccTLD, may have been intended for a fan site analogous to those he has at Speedway Motorsports, but he would attract no traffic to his sites if the domain names he’d chosen were not identified by the fans sought to be attracted with the Formula One team in whose affairs they had an interest. In other words, for the Respondent’s professed purpose to be realized, the Disputed Domain Names had to be names that Internet users would identify with the Complainant’s racing car team. Not only does that mean they had to be confusingly similar to marks users would associate with the Complainant, it also means that the Respondent’s choice of them was not legitimate. It sits oddly with the Respondent’s professed enthusiastic support for the Force One India team that he would opportunistically register the domain names most likely to be required by that team under its new ownership.
The Respondent claims that he intended to have his information page/fan page up and running in time for the October 20, 2011 Formula One Grand Prix in India, but that “unlawful threats” from the Complainant delayed him. The Respondent has submitted no evidence of unlawful threats and concedes that the only communications he had with the Complainant are those referred to in the Complaint. Nor has the Respondent submitted evidence that might constitute “demonstrable preparations to use” the Disputed Domain Names. The evidence of his driving school and speedway websites are not even probative of that fact, let alone corroborative.
On the evidence before the Panel, none of the provisions of paragraph 4(c) of the Policy are available to the Respondent and the Panel formally finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names.
C. Registered and Used in Bad Faith
As noted in section 6B above, the timing and form of registration of the Disputed Domain Names are consistent only with opportunistic registration. The Disputed Domain Names are an exact analogue of the Complainant’s domain names with the addition of SAHARA. It would have been obvious to the Respondent, being the motor sport enthusiast that he is, that the Complainant would expect to be able to reflect the new team name in domain names precisely in the form of the Disputed Domain Names. Despite the Respondent’s assertions to the contrary, the Panel has come to the view that the Respondent knew perfectly well that the Complainant would want the Disputed Domain Names and that the Complainant or someone associated with the Complainant’s team would likely pay him money for them, as was indeed the case until the Complainant decided not to follow through with the agreement to pay the Respondent USD 10,000 for six domain names including the Disputed Domain Names. The Respondent’s conduct is classic cyber squatting and the raison d’etre of the Policy. It is the very conduct contemplated by paragraph 4(b)(i) of the Policy and, whilst the Complainant did not argue the application of paragraph 4(b)(ii) of the Policy, that provision also applies to the facts before the Panel if the Panel treats the registration of the four Indian domain names that also embody the Complainant’s trademarks as evidence of a pattern of conduct which precludes the Complainant from reflecting its trademarks and service marks in a domain name of its choice.
The Complainant’s last minute refusal to complete the acquisition of the Disputed Domain Names as agreed with the Respondent is not conduct that the Panel necessarily would condone, because all things being equal it would generally be in the public interest for such settlement agreements to be honored, although the Panel has to consider the possibility, however remote, that the “agreement” would have been a trap purchase never intended to be consummated.
In any event, the Panel finds proven on the evidence that the Disputed Domain Names were both registered and are being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Names, <saharaforceindia.com> and <saharaforceindiaf1.com> be transferred to the Complainant.
Philip N. Argy
Dated: August 10, 2012