WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Formula One Licensing B.V. v. Network Operations, Hostnet bv
Case No. D2016-0121
1. The Parties
The Complainant is Formula One Licensing B.V. of Rotterdam, the Netherlands, represented by Wildpeak Pte. Ltd., Singapore.
The Respondent is Network Operations, Hostnet bv of Amsterdam, the Netherlands.
2. The Domain Name and Registrar
The disputed domain name <traderf1.com> (the "Domain Name") is registered with Tucows Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 20, 2016. On January 20, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 20, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact. For the purpose of compliance with the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"), the Complainant filed an amendment to the Complaint on January 25, 2016.
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 Supplemental Rules.
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 26, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 15, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 16, 2016.
The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on March 7, 2016. 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 is the owner of many trademark registrations worldwide that consist of or include the mark F1. These registrations include the following word mark registrations (hereafter the "Trade Marks"):
- F1, registered with the Office for Harmonization of the Internal Market ("OHIM") on August 2, 2007, registration number 5282462;
- F1, registered with the Office for Harmonization of the Internal Market ("OHIM") on October 28, 2012, registration number 9250721;
- F1, registered with WIPO on December 20, 1999, registration number 732134;
- F1, registered with the Benelux Office for Intellectual Property ("BOIP") on June 25, 1999, registration number 657310;
The Complainant and its affiliates are the registrants of over a hundred domain names that consist of or contain the F1 trademarks.
The Respondent registered the Domain Name on March 10, 2015.
5. Parties' Contentions
The Complainant contends that it is the owner of the trademark portfolio which comprises the F1 brand. The Complainant states that an affiliate company, Formula One World Championship Limited, is the commercial rights holder and commercial organizer of the Formula 1-F1 motor races known as the "FIA FORMULA ONE WORLD CHAMPIONSHIP" which is regulated by the Federation Internationale de l'Automobile (FIA).
The Complainant mentions that Formula 1 motor racing consists of approximately 20 races each year that comprise the "FIA Formula One World Championship". This championship is an international motor racing series, which was organized for the first time in 1950 and is held in many places throughout the world, amongst others in the Netherlands and the United Kingdom.
The Complainant argues that the F1 brand (like the Formula One brand) is internationally very well known if not famous. It claims that the broadcasting of the main Sunday F1 motor racing event has attracted around 425 – 600 million viewers annually since 2005, while it is broadcasted in around 200 countries. In addition, the Complainant submits statistics, collected by third parties, showing that the websites under "www.f1.com" and "www.formula1.com" draw around 40 – 67 million unique visitors each year since 2010.
The Complainant also submits that it is very active in the social media and online application ("app") space with a Twitter account "@F1" and an "official F1 app", which according to the Complainant are both hugely popular with the general public. For the 2014 season there were 3.5 million downloads of the app, each download being branded with the Trade Marks.
The Complainant stresses that the trademarks that comprise the F1 brand are used extensively to promote the racing events and that it uses these trademarks actively in licensing and sponsoring deals, allowing use of the marks by third parties against compensation and under strict rules to safeguard the brand's integrity.
The Complainant states that the element "trader" is purely descriptive and separated from the dominating and only distinctive element F1. The Complainant submits that the services which are offered on the corresponding website under the Domain Name are referring to financial services (trading in financial products), so the term "trader" is a non-distinctive element, next to the famous and well-known element F1. Therefore, the Complainant argues that it is sufficiently established that the Domain Name has identity or at least confusing similarity with the Trade Marks.
The Complainant submits that there is no evidence that the Respondent is or was commonly known by the Domain Name nor that the Respondent is making legitimate commercial or noncommercial fair use of the Domain Name. The Complainant states that it never gave consent to such use and argues that it is clear that the Respondent must have known the Trade Marks at the time of registering the Domain Name, as the website under the Domain Name prominently displays a full screen photograph of a race car which looks very much like the racing cars that participate in the F1 brand of racing as well as a logo which contains graphic elements similar to those used in the F1 device mark. The Complainant furthermore states that the Respondent is not an authorized re-seller, has no license from the Complainant and does not sell the Complainant's trademarked goods or services. As a consequence, the Complainant argues, these are not bona fide activities in using the Complainant's trademark F1.
According to the Complainant, "it is simply impossible to presume" that the Respondent, while using the element F1 in the Domain Name and displaying a picture of a racing car which looks very much like the racing cars used in the race series organized by the Complainant's group under the trademark F1, did not know about the Trade Marks when registering the Domain Name.
In addition, the Complainant submits that through the use of the race car image and the logo, the visitor may believe to have arrived at an authorized partner of the Complainant.
On the basis of the above, the Complainant argues that by using the Domain Name, the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Trade Marks as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or of a product or service on the Respondent's website.
Based on the foregoing, the Complainant requests that the Domain Name be transferred to the Complainant.
The Respondent did not reply to the Complainant's contentions within the period set by the Policy. On the due date of this decision, the Respondent sent an email to the Center, submitting inter alia:
"It would be a huge investment to rebuild a new platform with several offices around the world but I would appreciate if you could give us a chance to change it.
We would change the site to traderfutur1 and also change the banner and everything related to F1! I would appreciate if you could give us the chance to do so asap, because there was no intention to use the F1 trademark."
6. Discussion and Findings
A. Identical or Confusingly Similar
The Trade Marks consist of the element "F1" which is incorporated in its entirety in the Domain Name. The addition of the generic word "trader" to the word mark F1 does not change the confusing similarity of the Domain Name and the Trade Marks, also taking into account that F1 is not a generic term or word, as well as the reputation of the Trade Marks (see also WIPO Overview of WIPO Panel views on selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.9). The generic Top-Level Domain ("gTLD") ".com" is typically disregarded under the confusing similarity test, since it is a technical registration requirement (see WIPO Overview 2.0, paragraph 1.2).
Therefore, the Panel finds that the Domain Name is confusingly similar to the Trade Marks.
B. Rights or Legitimate Interests
The Complainant has to make out a prima facie case that the Respondent does not have rights or legitimate interests in the Domain Name (WIPO Overview 2.0, paragraph 2.1). Based on the evidence and the undisputed submissions of the Complainant, the Panel concludes that the Respondent is not commonly known by the Domain Name and has not acquired trademark rights to the Domain Name. The Complainant has not authorized, licensed or otherwise consented to the Respondent's registration and use of the Trade Marks as part of the Domain Name. Furthermore the use, on the website under the Domain Name, of an image of a racing car, similar to those used in Formula 1 races, and a logo containing F1, similar to that used on the Complainant's website, in the context of the Respondent's financial services does not constitute "a bona fide offering of goods or services", nor a "legitimate noncommercial or fair use" of the Domain Name (see Sanofi v. Hka c/o Dynadot Privacy, WIPO Case No. D2014-0829; Groupon Inc. v. Andrew Williamson, WIPO Case No. D2015-0488 and the cases cited in WIPO Overview 2.0 paragraph 2.6).
Furthermore, also taking into account the reputation of the Trade Marks, the Panel cannot conceive of any fair use of the Domain Name on the facts before it.
In view of the above, the Panel concludes that the Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
Based on the information and the evidence provided by the Complainant, the Panel finds that at the time of registration of the Domain Name the Respondent was or should have been aware of the Trademarks. First, the oldest registration of the Trade Marks predates the Domain Name registration by 16 years.
Secondly, the element F1, of which the Trade Marks consist and which is incorporated in its entirety in the Domain Name, is not a term or word that a person wishing to register a domain name would accidently think of. Thirdly, the use by the Respondent on the website to which the Domain Name resolves of an image of a racing car, similar to those used in Formula 1 races, and a logo containing F1, similar to that used on the Complainant's website, confirms that the Respondent was aware of the Complainant and the Trade Marks (see F. Hoffmann-La Roche AG v. Transure Enterprise Ltd., WIPO Case No. D2008-0422 and cases cited in WIPO Overview 2.0, paragraph 3.4).
Under these circumstances, the Panel concludes that the Domain Name has been registered in bad faith.
The fact that the Domain Name resolved to a website showing images of racing cars and a logo, containing the element F1, similar to a logo of the Complainant, indicates that the Respondent was seeking to attract for commercial gain Internet users to its website by falsely creating the impression that it was somehow supported or approved by or connected to the Complainant, as set out in paragraph 4(b)(iv) of the Policy. Under the circumstances of this case, this constitutes evidence of bad faith use of the Domain Name (see HUGO BOSS Trade Mark Management GmbH & Co. KG , HUGO BOSS AG v. Dzianis Zakharenka, WIPO Case No. D2015-0640; Chocoladefabriken Lindt & Sprüngli AG v. Lasco Maxim, WIPO Case No. D2015-1430).
Therefore, the Panel concludes that the Domain Name has been registered and is 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 name <traderf1.com> be transferred to the Complainant.
Wolter Wefers Bettink
Date: March 21, 2016