WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Formula One Licensing B.V. and Formula One Administration v. Domains by Proxy, Inc. and Mohammad Sultan

Case No. D2010-1644

1. The Parties

The Complainants are Formula One Licensing B.V. and Formula One Administration of Amsterdam, the Netherlands, and London, United Kingdom of Great Britain and Northern Ireland, respectively, represented by Wild Schnyder AG, Switzerland.

The Respondents are Domains by Proxy, Inc. and Mohammad Sultan of Scottsdale, Arizona, United States of America, and of lucknow, India, respectively.

2. The Domain Names and Registrar

The disputed domain names <watchliveformula1.com> and <watchlivef1.com> are registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 29, 2010. On September 29, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On the same day, 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 September 30, 2010 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 Amended Complaint on October 4, 2010.

The Center verified that the Amended 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 October 5, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 25, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 26, 2010.

The Center appointed Christopher J. Pibus as the sole panelist in this matter on November 1, 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.

4. Factual Background

The Complainant organizes the FIA Formula One World Championship.

The Complainant owns trademark registrations for F1, FORMULA 1 and FORMULA1.COM, namely, F1 European Community trademark registration no. 6089809 (registered July 3, 2008), FORMULA 1 European Community trademark registration no. 770479 (registered February 20, 2006), FORMULA 1 Canadian trade-mark registration no. TMA750,324 (registered October 15, 2009), F1 FORMULA 1 (logotype) United States trademark registration no. 2,975,282 (registered July 26, 2005), FORMULA 1 United States trademark registration no. 3,016,540 (registered November 22, 2005), F1 FORMULA 1 (logotype) United States trademark registration no. 2,951,003 (registered May 17, 2005), FORMULA1.COM United States trademark registration no. 2,812,398 (registered February 10, 2004) and F1 United States trademark registration no. 3,337,611 (registered November 20, 2007).

The Complainant also owns the domain names <f1.com> and <formula1.com> with active websites.

The Respondent registered the disputed domain names <watchliveformula1.com> and <watchlivef1.com> on October 12, 2008 and June 25, 2007, respectively. At the time of filing the complaint, the disputed domain names resolved to a website that offered links to live Formula One races, as well as races from other disciplines of Motorsport.

5. Parties’ Contentions

A. Complainant

(a) Identical or Confusingly Similar

The Complainant contends that the domain names <watchliveformula1.com> and <watchlivef1.com> are confusingly similar to the Complainant’s trademarks listed above.

The Complainant submits that the first part of the disputed domain names, namely “watchlive”, is a generic term and purely descriptive and so it must not be taken into consideration when deciding whether there is a likelihood of confusion. Accordingly, the Complainant contends that the second element, namely “formula1” or “f1”, is the dominant element, which is identical to the registered trademarks of the Complainant. Consequently, the Complainant contends that the domain names <watchliveformula1.com> and <watchlivef1.com> are confusingly similar to the Complainant’s trademarks.

(b) Rights or Legitimate Interests

The Complainant contends that the Respondent cannot demonstrate or establish any rights or legitimate interests in the disputed domain names. The Complainant submits that the Respondent is not making a bona fide use of the disputed domain names, and is using the disputed domain names in connection with a website that offers live streams of the Complainant’s events for payment under its website “www.watchliveformla1.com” (the domain <watchlivef1.com> redirects to “www.watchliveformula1.com”). The Complainant contends that all copyright in such content vests with the Complainant. The Complainant further submits that the Respondent has never sought nor obtained permission to use this content or the disputed domain names.

(c) Registered and Used in Bad Faith

The Complainant submits that the disputed domain names were registered and are being used in bad faith for the following reasons: (i) the Respondent intentionally attempts to attract, for the purposes of commercial gain, Internet users to the Respondent’s website by creating confusion with the Complainant’s trademarks; (ii) Internet users of the Respondent’s website may be misled into believing that the services are rendered or authorized by the Complainant or an affiliated company; (iii) the copyright in the audio visual footage of races that can be accessed via the Respondent’s website vests with the Complainant and is being used by the Respondent without permission; and (iv) the logo displayed on the Respondent’s website is similar if not almost identical to the logo shown on the Complainant’s website.

B. Respondent

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

6. Discussion and Findings

According to paragraph 4(a) of the Policy, in order to succeed, the Complainants must establish each of the following elements:

(i) the disputed domain names are identical or confusingly similar to the trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interest in respect of the domain names; and

(iii) the domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has established rights in the F1, FORMULA 1 and FORMULA1.COM trademarks, as evidenced by the Certificates of Registrations submitted with the Complaint.

The Panel finds that the domain names <watchliveformula1.com> and <watchlivef1.com> are confusingly similar to the Complainant’s trademarks, because the disputed domain names contain the dominant elements of the trademark, namely F1, FORMULA 1 and FORMULA1.COM, in their entirety. The panel accepts that the addition of the descriptive and common words “watch” and “live” does not serve to distinguish the domain names from the Complainant’s trademarks in any meaningful way. The words “watch” and “live” are common words in the English language, meaning “to look at” and “at the actual time of occurrence” and accordingly, these words simply suggest the type of service provided by the Respondent, namely links to websites for watching live Formula One races.

The Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademarks. The Complainant has therefore satisfied the requirement under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The Panel finds no evidence that the Respondent ever had any rights or legitimate interest in the disputed domain names.

The Respondent was not known by the disputed domain names and is not using the domain names in connection with a bona fide offering of goods and services. The Panel accepts that the Respondent is operating a website in connection with the disputed domain names to link to websites that display Complainant’s Formula One events. The Panel also accepts that the Complainant never authorized, licensed or permitted the Respondent to use this copyrighted content or its trademarks. These factors support the conclusion that the Respondent adopted its domain names in order to trade on the goodwill and reputation of the Complainant, and not because of any legitimate interest or right.

In light of the Respondent’s failure to file any response to the Complainant’s contentions, the Panel finds that the Complainant has satisfied the second requirement of the paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The Respondent has registered and is using the domain names <watchliveformula1.com> and <watchlivef1.com> (also in connection with a website which offers links to websites that show live races in which the Complainant owns the copyright). The evidence shows that the Respondent was not authorized or licensed to use the Complainant’s trademark or copyrighted materials. The Respondent did not file any response contesting this claim. The Panel is prepared to find that the Respondent is deliberately trading on the goodwill of the Complainant, by attracting Internet users and diverting Internet traffic intended for the Complainant’s website, and by so doing, the Respondent is interfering with the legitimate commercial business of the Complainant.

Therefore, the Complainant has satisfied the third requirement of paragraph 4(a) of the Policy.

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 names <watchliveformula1.com> and <watchlivef1.com> be transferred to the Complainant Formula One Licensing B.V.

Christopher J. Pibus
Sole Panelist
Dated: November 15, 2010