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WIPO Arbitration and Mediation Center


Formula One Licensing B.V. v. Whois Privacy Protection Service Inc. / Planethoster, Saber Bariz

Case No. D2015-1314

1. The Parties

Complainant is Formula One Licensing B.V. of Rotterdam, the Netherlands, represented by Wild Schnyder AG, Switzerland.

Respondent is Whois Privacy Protection Service Inc. of Kirkland, Washington, United States of America (the “USA”) / Planethoster, Saber Bariz of Laval, Quebec, Canada.

2. The Domain Name and Registrar

The disputed domain name <f1-tuning.com> (the “Domain Name”) is registered with eNom (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 29, 2015. On July 29, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 29, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center provided the registrant and contact information disclosed by the Registrar to Complainant, and invited Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on August 11, 2015.

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”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 13, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was September 2, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 3, 2015.

The Center appointed Clive L. Elliott Q.C. as the sole panelist in this matter on September 14, 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

According to WhoIs the Domain Name was registered on February 19, 2013.

5. Parties’ Contentions

A. Complainant

Complainant states that it is the owner of a trademark portfolio, comprising the F1 brand. An affiliate company of Complainant, Formula One World Championship Limited (“FOWC”), is the commercial rights holder and commercial organizer of the FORMULA 1 – F1 brand (Complainant’s Trademark) of motor races known as the FIA Formula One World Championship, which is regulated by the Federation Internationale de l’Automobile (FIA). The FIA first established the Championship in 1950, and FOWC has the exclusive rights to commercialize the Championship and as such enjoys exclusive rights to license the trademarks owned by Complainant. Formula One Management Limited (“FOM”) manages FOWC’s business as agent and business manager. Complainant, FOWC and FOM are referred to for convenience as the “Formula One Group”.

Complainant claims that the FORMULA 1 and F1 brands are internationally well-known and as such enjoy widespread notoriety as famous marks symbolizing the most prestigious motor racing series in the world. The F1 brand is said to be synonymous with high quality goods and technological excellence, encompassing brand values associated with glamour, prestige and aspirational qualities. F1 motor racing draws some of the largest television audiences in the world for an annual sporting event and the websites “www.f1.com” and “www.formula1.com” draw very significant traffic. Complainant also states that F1 races have been televised extensively each year since as early as 1981, and have been broadcast to over 200 countries around the world.

Complainant contends that its Group has carefully cultivated the use of its trademarks on a wide range of diverse products to establish a unique set of brand values that encompass high quality goods and signify technologically superior products.

Complainant asserts that the reputation and goodwill associated with its marks covers all, and stretches far wider than goods and services that one might traditionally associate with motor racing.

Complainant or related companies own a number of domain names with the element F1, including <f1.com> and the Formula One Group publishes the official website of FORMULA 1 at “www.formula1.com” which is also accessible at “www.f1.com”.

Consumers are able to visit “www.f1.com” or “www.formula1.com” and buy original, high quality products such as jackets, hoodies or caps with the official logos and style by the racing teams, such as Red Bull, Ferrari, McLaren, Mercedes, Williams etc.

Complainant asserts it owns, among others, the following trademarks:

- F1 (word) 009250721 Community Trademark in many classes including 12 and 25;

- F1 (word) 85227387 in the USA for class 12;

- F1 (word) 85227395 in the USA for class 25.

Apart from these marks, Complainant owns trademark rights consisting of or with the element F1 in a wide range of classes for a variety of goods and services.

Complainant asserts that the Domain Name directly displays advertising and information for goods as protected under Complainant’s Trademark and for which Complainant’s Trademark enjoys the status of a famous and well-known trademark. Complainant notes the term “tuning” is a dictionary word that is well known and used in connection with sports- and racing cars, to improve their performance and appearance. In the Domain Name the word “tuning” is purely descriptive and clearly separated from the dominating element “F1” which stands at the beginning of the Domain Name. It is argued that the goods which are offered for sale on the corresponding websites are motor sports related, so the term “tuning” simply evokes proximity to motor sports.

The Domain Name resolves to an e-commerce website which Complainant contends abuses its trademark rights. For example, the exact F1 Logo, as used and registered by Complainant, is used in the address line, the tab and the website’s body.

Further, Respondent has created a proximity to Complainant’s business by prominently displaying a silhouette of a race car which looks very much like the cars used in Complainant’s race series and using another trademark which is protected by Complainant, namely FORMULE 1.

Complainant contends that there is no evidence that Respondent is or was commonly known by the trademark F1 TUNING, nor is there any evidence that Respondent is making legitimate commercial or noncommercial use of the Domain Name, and the additional information about a new or second Respondent, Planethoster in Canada, Complainant contends, adds nothing to this finding. Planethoster appears to be active in the business of webhosting and email hosting. Complainant therefore assumes that Planethoster is not the true owner, who is hiding behind the webhoster, who in turn was hiding behind the registered owner. Complainant never gave consent to such use and it is submitted that Respondent must have known Complainant’s Trademark at the time of registering the Domain Name, as Respondent makes very aggressive reference to Complainant’s motor sport themes on the website itself and copies directly and to 100% of the graphic elements.

Respondent is not an authorized re-seller, has no license from Complainant and does not sell Complainant’s trademarked goods under the infringing website. As a consequence, these are no bona fide activities in using Complainant’s Trademark. Respondent therefore fails to demonstrate that it has rights or legitimate interests in the Domain Name.

Complainant asserts that by Respondent using the Domain Name, it has intentionally attempted to attract for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’ s website or location or of a product or service on Respondent’s website or location.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

Complainant has for many years used and sought protection for Complainant’s Trademark in connection with motor racing and an elite motor racing competition. Complainant asserts that Complainant’s Trademark is used and registered in a number of countries around the world and that Complainant enjoys a worldwide reputation.

Complainant argues that the Domain Name is confusingly similar to Complainant’s Trademark and that the addition of the word “tuning” does little to remove this confusing similarity (no more than a dictionary word – well-known and used in connection with sports and racing cars, to improve their performance and appearance) and indeed has no material influence on the assessment of the similarity between the Domain Name and Complainant’s Trademark. There is merit in this argument.

In this particular case the Panel finds:

a) Complainant has rights in respect of the Complainant’s Trademark.

b) The Domain Name is at least confusingly similar to Complainant’s Trademark.

Accordingly, the Panel is satisfied that the first element of the Policy has been met.

B. Rights or Legitimate Interests

Complainant asserts that the Domain Name directly displays advertising and information for goods as protected under Complainant’s Trademark and resolves to a website which includes the exact F1 Logo, a silhouette of a race car which resembles a Formula 1 race car and in addition uses the FORMULE 1 trademark itself. None of this is denied by Respondent. Nor is any explanation provided as to why Respondent is entitled to or needs to use Complainant’s intellectual property in its operations.

Equally, in light of Complainant’s prima facie case, and as the Panel concludes that Respondent’s use of the Domain name is in bad faith, Respondent has failed to demonstrate use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services. As a result, there is no evidence to show that Respondent has any intention of noncommercial or fair use of the Domain Name.

In the circumstances, it is difficult to see how Respondent’s conduct could be characterized as legitimate and thus permissible. On this basis the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.

The Panel is satisfied that the second element of the Policy has been met.

C. Registered and Used in Bad Faith

Respondent has failed to establish that it has any license or permission to use Complainant’s Trademark. On that basis it is reasonable to infer that Respondent wishes to take advantage of Internet users who may know of or otherwise wish to purchase or partake in branded goods or services provided by or associated with Complainant.

In the absence of any explanation from Respondent as to how and why the FORMULA 1 and F1 trademarks are necessary for the legitimate operation of its business (as such use improperly creates an association between Complainant and Respondent’s website) the Panel finds that it registered and used the Domain Name in bad faith. That is, so as to take advantage of Internet users who know and trust Complainant’s Trademark.

The Panel thus concludes that the third element of the Policy has been met.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <f1-tuning.com> be transferred to Complainant.

Clive L. Elliott Q.C.
Sole Panelist
Date: October 5, 2015