WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Colt Car Company Limited v. Lee Linford, FQ Performance Ltd
Case No. D2015-0023
1. The Parties
1.1 The Complainant is The Colt Car Company Limited of Gloucestershire, United Kingdom of Great Britain and Northern Ireland (the “UK”), represented by HGF Limited, UK.
1.2 The Respondent is Lee Linford, FQ Performance Ltd of Brackley, Northamptonshire, UK.
2. The Domain Name and Registrar
2.1 The disputed domain name <fqperformance.com> (the “Domain Name”) is registered with 1&1 Internet AG (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 8, 2015. On January 8, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 12, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on January 28, 2015.
3.2 The Center verified that the Complaint together with 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”).
3.3 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 January 29, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 18, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 19, 2015.
3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on February 24, 2015. 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
4.1 The Complainant is a company incorporated in England and is a wholly owned subsidiary of Mitsubishi Corporation, the well-known vehicle manufacturer. It has been appointed by Mitsubishi as its sole authorised importer and distributor of cars, light commercial vehicles and spare parts for those vehicles in the UK.
4.2 The term “FQ” is one that Mitsubishi has used in connection with versions of the Mitsubishi Lance Evolution series of motor vehicles sold in the UK since 2003. In particular, it has been used in respect of variants of that vehicle including the FQ-300, FQ-320, FQ-340 and FQ-400. The numbers in these names relate to the power of the engine in that vehicle.
4.3 The Complainant is the registered owner of UK registered trade mark no. 2294114 for the word mark FQ300 in class 12, which was filed on February 28, 2002.
4.4 The Domain Name was registered in June 2007.
4.5 The Respondent would appear to be a company registered in England and Wales which is associated with a Mr. Linford. According to records filed at Companies House (i.e. the UK company registry), a company was incorporated under the name “FQ Performance Limited” with registered number 06395606 on October 10, 2007, but was dissolved on February 23, 2010. A further company was incorporated under the name “FQ Performance Limited” with registered number 07246855 on May 7, 2010, but then was dissolved on June 3, 2014.
4.6 For at least a number of years the Domain Name has been used for a website that promotes the car parts business of “FQ Performance Limited”. Since at least December 2011, the home page of that website has contained the following text:
“FQ-Performance is the leading online retailer of high performance car parts including styling and modification parts. Turn heads and be the envy of your peers with the latest mods and styled parts. We cater for most cars Mitsubishi, Lexus and Subaru to name a few. An example of some of the stock we hold includes –
Brakes -- Turbos -- Stroker Kits -- Complete Engines -- Electronics -- Lighting -- Fuel Systems and much more.....
Help is always on hand if you need that extra info. If you require something special and can’t find it on this site then please give us a call as we may be able to special order items for you. We only stock high performance car parts that are of excellent quality and premium brands like –
HKS -- Apexi -- Blitz -- Magnex -- Blue Flame -- SFS Performance – Powerflex […]”.
4.7 On November 2011, the Complainant sent a letter to “FQ Performance Limited” complaining about the use of the term “FQ” in the company’s name, in the Domain Name and on the website operating from the Domain Name. It also complained about the use of other Mitsubishi related marks on the website.
4.8 There then followed various correspondence in which the Complainant (or its attorneys) continued to complain about the way various marks were being used by the Respondent and in which the Respondent made comments to the effect that it was about to cease to trade. During that correspondence and in an email dated February 27, 2012 from Mr. Linford to the Complainant’s trade mark attorney, Mr. Linford stated as follows:
“Although I feel that Mitsubishi’s claim against my company is erroneous, I have made the decision that I am happy to rebrand FQ Performance and change its name and all pionts [sic] discussed.
However, I have invested a lot of money into FQ Performance creating our brand, and changing this will be expensive.
I believe that a settlement of GBP 50,000 would be mutually beneficial for both parties and this can be put behind us.”
4.9 Notwithstanding the fact that “FQ Performance Limited” was dissolved in June 2014, the website with the home page described above, still continues to operate from the Domain Name. It would also appear that Mr. Linford continues to trade, whether directly or through some corporate entity, under the name “Optimum Performance”.
5. Parties’ Contentions
5.1 The Complainant contends that by reason of the use of the term “FQ”, it has “established strong common law trade mark rights” in that term in relation to vehicles and automotive goods and that this term “is exclusively associated with the Complainant in connection with motor vehicles and parts and fittings.” In addition to the matters identified in the Factual Background section of this decision, it relies upon the use of the term “FQ” in the CAP and Glass’s Guide since 2004 which provide residual value guides for cars (although extracts from these guides are not provided) and print out of Google searches performed against the term “FQ + cars” performed in October 2014. The Google search results almost exclusively relate in one way or another to Mitsubishi vehicles.
5.2 The Complainant maintains that the Domain Name is confusingly similar to its registered UK trade mark and its alleged common law trade mark. This is claimed to arise out of both the use of the term FQ in the Domain Name and the word “performance”, which is said to allude to the fact that the Complainant’s FQ products are performance vehicles.
5.3 The Complainant further contends that the Respondent was not authorised to use the FQ term and that its use by the Respondent does not constitute legitimate fair use.
5.4 The Complainant further alleges that the Domain Name has been registered and used with an intent to attract for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark. The Respondent’s offer to sell the Domain Name to the Complainant for GBP 50,000 is also said to show that the Domain Name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the Domain Name to the Complainant for valuable consideration in excess of the Respondent’s out-of-pocket costs.
5.5 The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 There are no exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the present dispute based upon the Complaint, notwithstanding the failure of any person to lodge a formal Response.
6.2 Notwithstanding this default, it remains incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (Policy, paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (Policy, paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).
6.3 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the panel shall “draw such inferences therefrom as it considers appropriate”.
A. Identical or Confusingly Similar
6.4 The Panel accepts that the Domain Name is confusingly similar to the Complainant’s registered trade mark. That mark is not for “FQ” alone but the number element of that mark is a reference to the power of the engine of the vehicle to which the mark is applied. Also notwithstanding the fact that there is limited evidence as to how the term “FQ” alone is perceived by the relevant public, the Panel is prepared to accept for the purposes of these proceedings that the use of that term means that it has acquired at least some degree of distinctiveness so far as motor vehicles are concerned. For similar reasons the Panel accepts that the Complainant has common law rights in the term “FQ” under the English law of passing off that are recognised as constituting trade mark rights for the purposes of the Policy.
6.5 The Panel is reinforced in its conclusion by the way in which the Domain Name has been used in this case. In RapidShare AG and Christian Schmid v. majeed randi, WIPO Case No. D2010-1089 this Panel stated as follows:
“Of course, the test of “confusing similarity” is an objective one and not one of the Respondent’s subjective intent. But that does not mean that in an appropriate case evidence of what a Respondent subjectively intended cannot be evidence of how the mark is objectively understood”.
6.6 It seems clear to the Panel that the use of the Domain Name shows that the Respondent intended the FQ in the Domain Name to refer to the Complainant’s mark and products. This itself is evidence of how the term “FQ” is objectively understood.
B. Rights or Legitimate Interests
6.7 There appears to be no dispute that the Respondent in this case (whoever it may actually be) has used the Domain Name to promote and sell the Complainant’s products or at least products related to the Complainants “FQ” series of cars.
6.8 The issue of whether a reseller of a trade mark owner’s products has a right or legitimate interest in the domain name that incorporates that trade mark is addressed in paragraph 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). This describes the “Consensus view” on this issue as follows:
“Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site’s accurately and prominently disclosing the registrant's relationship with the trademark holder. The respondent must also not try to “corner the market” in domain names that reflect the trademark. Many panels subscribing to this view have also found that not only authorized but also unauthorized resellers may fall within such Oki Data principles. Pay-per-click (PPC) websites would not normally fall within such principles where such websites seek to take unfair advantage of the value of the trademark.”
6.9 The website operating from the Domain Name appears not to satisfy the “requirements” identified in this paragraph in at least two important respects. First, it is clear from the text that would seem to have appeared at all times on the website (and that is set out at paragraph 4.6 of this decision above) that the website is being used to promote a business and parts that is not just limited to Mitsubishi manufactured parts or even parts for “FQ” branded Mitsubishi cars. Second, the website does not appear to have accurately and prominently disclosing the registrant’s relationship with the trade mark holder. Although “FQ Performance Limited” is identified as the company behind the website, there appears to be no statement to the effect that this entity is unrelated to the Complainant or Mitsubishi.
6.10 Given this and the Complainant’s contention that it has not agreed to the Respondent’s use of the term “FQ” in the Domain Name, the Panel finds that the Respondent has no right or legitimate interest in the Domain Name and that the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
6.11 The Complainant contends that the Respondent’s offer to settle the ongoing dispute between it and the Complainant for GBP 50,000 is evidence that the Domain Name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the Domain Name to the Complainant. The Panel is not persuaded that this is so. A more convincing reading of the evidence is that the Respondent adopted the term “FQ” as part of the Domain Name and its business name because of its association with the Complainant and Mitsubishi and the fact that it was at least in part selling “FQ” related products. The offer of GBP 50,000 after several years of such use at a time when the Respondent knew that the Complainant objected to such use, strikes the Panel as simply an attempt by Mr. Linford of the Respondent to “try his luck”. It seems highly unlikely that when Mr. Linford registered the Domain Name (presumably back in 2007), this was done with any such payment in mind.
6.12 Nevertheless, in the Panel’s view this does not matter. It follows from the fact that the Respondent in this case cannot satisfy the requirements set out in paragraph 2.3 of the WIPO Overview 2.0, and from the fact that the Domain Name was registered with the intent to use it as it has been used, that the Domain Name has been both registered and used in bad faith (see for example the discussion in Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227). In short, (i) the sale of goods by reference to the “FQ” name and mark that are not the Complainant’s goods and which are in some case not for the Complainant’s cars; and (ii) the failure to accurately and prominently disclosing the registrant’s relationship with the trade mark holder, each involve an unfair taking advantage of the reputation that the Complainant has developed in the “FQ” term. Such unfair advantage is sufficient for a finding under the Policy that the Domain Name was both registered and used in bad faith. The Complainant has, therefore, made out the requirements of paragraph 4(a)(iii) of the Policy.
7.1 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 name <fqperformance.com> be transferred to the Complainant.
Matthew S. Harris
Date: February 25, 2015