WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ferrari S.p.A. v. Ms. Lee Joohee (or Joo-Hee)
Case No. D2003-0882
1. The Parties
1.1. The Complainant is Ferrari S.p.A., Maranello (province of Modena), Italy, represented by Studio Legale Jacobacci e Associati, Italy.
1.2. The Respondent is Ms. Lee Joohee (or Joo-Hee), Seoul, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name is registered with eNom.
3. Procedural History
3.1. The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 5, 2003. On November 6, 2003, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. The registrar eNom failed to submit a registrar�s verification response. Notwithstanding the above, the Center made a registrar�s "Whois" printout on November 12, 2003, and furthermore, this Panel confirmed through the information reflected on the registrar�s "Whois" website, which provides information only of the domain names that are registered by eNom, Inc., that the Respondent is listed as the registrant; that such domain name is in "registrar-lock" status; and confirmed the details for the administrative and technical contacts at which communications under this domain name dispute have been sent to. 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").
3.2. 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 November 12, 2003. In accordance with the Rules, Paragraph 5(a), the due date for Response was December 2, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent�s default on December 5, 2003.
3.3. The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on December 9, 2003. 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 the well-known motorcar maker, Ferrari S.p.A., of Italy. The name FERRARI has been associated with the manufacture of quality motorcars for decades. The name FERRARI is strongly associated with and promoted through the code of motor racing known as Formula One, in which sport FERRARI currently holds championship status. The name Formula One is popularly abbreviated to the acronym F1. World champion racing driver Michael Schumacher is well known to be one who drives for FERRARI.
4.2. The trademark name FERRARI can only reasonably be described as world famous and has for long been promoted internationally. Complainant has acquired hundreds of registrations of its trademark throughout the world. These include representatively Italian registrations No. 504.510 and No. 209.026 extending back to 1966; an international registration document No. 429.829 issued by WIPO/OMPI dated March 30, 1977; Korean registration document 364375, Korea being the apparent domicile of Respondent; and Community Trademark registration No. 161.950. FERRARI has its own Domain Name incorporating its trademark.
4.3. No significant facts are available about the Respondent except that the disputed Domain Name was registered by her apparently on June 9, 2002.
5. Parties� Contentions
A. Complainant
5.1. Complainant contends that the disputed Domain Name is confusingly similar to Complainant's trademark FERRARI, particularly given Complainant's association with the sport of Formula One motor racing, known as F1.
5.2. Respondent has no rights or legitimate interests in respect of the Domain Name. There is no evidence of the Respondent�s use of or demonstrable preparations to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; respondent has never been commonly known in the normal course of business by the trademark, trade name or Domain Name FERRARI or F1FERRARI; and there is no evidence of a bona fide non-commercial or other legitimate fair use of the Domain Name by Respondent.
5.3. Respondent has registered and used the disputed Domain Name in bad faith.
5.4. Respondent knew or ought to have known, and could not have been unaware, of Complainant's trademark.
5.5. Respondent's combination of the abbreviation F1 with Complainant's trademark FERRARI is evidence that Respondent knew of both Complainant's trademark and Complainant's reputation in the sport of F1 racing.
5.6. The use of such a well-known trademark by Respondent having no connection with the Complainant is in itself evidence of opportunistic bad faith.
5.7. Complainant has concluded that the phone and fax numbers of Respondent are false and the address of Respondent is probably false, these deceptions being evidence of bad faith.
5.8. The disputed Domain Name does not resolve to a website or Internet presence. Retention of a Domain Name passively is, in the circumstances, within the concept of use in bad faith.
5.9. Complainant requests that the disputed Domain Name be transferred to Complainant.
B. Respondent
5.10. The Respondent did not make any submissions and has not denied the Complaint.
6. Discussion and Findings
Jurisdiction of Panel
6.1. Paragraph 4(a) of the Policy states:
"You are required to submit to a mandatory administrative proceeding in the event that a third party (a "complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure, that:
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith."
6.2. The Complainant has made the relevant assertions as in 6.1 above. This dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
Whether the Domain Name is Identical or Confusingly Similar to a Trademark
6.3. The disputed Domain Name as registered by the Respondent comprises the Complainant's well known registered trademark FERRARI in combination with the widely recognised acronym F1, which stands for Formula One, being a category of motor racing with which FERRARI is popularly associated. Precedent cases of long standing have generally found confusing similarity where a trademark has been combined with a prefix or suffix, even where the prefix or suffix is not particularly relevant (Telia AB v. Alex Ewaldsson and Birgitta Ewaldsson, (WIPO Case No. D2000-0599); InfoS, Inc. v. Delighters, Inc. d/b/a Cyber Joe�s Internet Café, (WIPO Case No. D2000-0068). In the present instance the prefix F1 is highly relevant to Complainant's image and reputation. The Panel finds on the facts that the disputed Domain Name is confusingly similar to the Complainant's trademark in terms of Paragraph 4(a)(i) of the Policy.
Whether Respondent has Rights or Legitimate Interests in Respect of the Domain Name
6.4. The Complainant is required to prove that the Respondent has no rights or legitimate interests in respect of the disputed Domain Name. The Complainant certifies that it has registered and used the trademark FERRARI in many countries world-wide for many years and has submitted in evidence a compilation of registration details running to some 103 pages, each page listing around 10 to 20 such registrations. Specifically Complainant provides full copies of representative registration documents in respect of Italy dating to 1966; an international registration document issued by WIPO/OMPI dated March 30, 1977; what is stated to be a Korean registration document, Korea being the apparent domicile of Respondent; and a Community Trademark registration. The Complainant certifies that it has not licensed the trademark to the Respondent nor entered into any relationship that could give the Respondent any right to use the trademark. A prima facie case has been made out to the effect that the Respondent does not have any rights or legitimate interests in the Domain Name.
6.5. The Respondent has not denied the Complainant's claims in terms of Paragraph 4(c) of the Policy and has not purported to establish rights or legitimate interests in respect of the disputed Domain Name. In particular, Respondent does not claim to have used the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or to have been commonly known by the Domain Name; or to have made a legitimate noncommercial or fair use of the Domain Name. The Respondent has not demonstrated a legitimate interest in the Domain Name in any other way. The Panel finds for the Complainant under Paragraph 4(a)(ii) of the Policy.
Whether the Domain Name Has Been Registered and Is Being Used in Bad Faith
6.6. In accordance with Paragraph 4(a)(iii) of the Policy the Complainant must prove that the Domain Name has been registered and is being used in bad faith. Paragraph 4(b) lists four circumstances that shall be evidence of the registration and use of a Domain Name in bad faith. However, these four circumstances are without limitation and bad faith may be found otherwise, especially where a Respondent has made no other use of the Domain Name than to hold it and has submitted no formal response to the complaint.
6.7. In Telstra Corporation Limited v. Nuclear Marshmallows, (WIPO Case No. D2000-0003) Andrew F. Christie, Panelist, developed the persuasive argument (Paragraphs 7.8 � 7.11 therein) that "the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith". As underlined by the well-researched body of precedent cases submitted by the present Complainant, Panelist Christie's dictum has often been repeated: "inaction is within the concept". The route to a finding of bad faith where the Domain Name is passively held and Respondent is unresponsive has been well charted in numerous cases since Telstra, including Audi AG v. Hans Wolf, (WIPO Case No. D2001-0148), ().
6.8. The present Respondent has appropriated a trademark having a strong reputation and widely known. The Panel finds it implausible that Respondent was unaware of Complainant's trademark, particularly given Respondent's action in amalgamating the trademark with the acronym F1. Respondent has provided no evidence or suggestion of a possible legitimate use of the Domain Name. Thus, in the words of Telstra, it is not possible to conceive of any plausible actual or contemplated active use of the Domain Name by the Respondent that would not be illegitimate, such as passing off, or an infringement of consumer protection legislation, or an infringement of the Complainant�s rights under trademark law.
6.9. Evidence of the Complainant is that the phone and fax numbers of Respondent are false and the address probably so, an aggravation of bad faith (Telstra Corporation Limited v. Nuclear Marshmallows, (WIPO Case No. D2000-0003); Audi AG v Hans Wolf, (WIPO Case No. D2001-0148); Oxygen Media, LLC v. Primary Source, (WIPO Case No. D2000-0362); Diversified Gestao e Investimientos Lda. v. Krikor Doumanian, (WIPO Case No. D2000-1749); Southern California Edison Company v. John Simms, (WIPO Case No. D2002-0369); Wachovia Corporation v. Peter Carrington, (WIPO Case No. D2002-0775).
6.10. The Registration of a well known trademark of which the Respondent must reasonably have been aware is in itself sufficient to amount to bad faith, one of the most frequently cited precedent cases being Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., (WIPO Case No. D2000-0163).
6.11. In summary, as concluded in 6.3 above the disputed Domain Name is confusingly similar to the Complainant's trademark in the terms of Paragraph 4(a)(i) of the Policy. As concluded in 6.5 above, the Respondent has no rights or legitimate interests in the Domain Name in the terms of Paragraph 4(a)(ii) of the Policy. For the reasons given in 6.8, 6.9 and 6.10 above, the Respondent has registered and is using the Domain Name in bad faith in the terms of Paragraph 4(a)(iii) of the Policy. The Complainant has proven the three elements required by Paragraph 4(a) of the Policy and accordingly the Panel decides for the Complainant.
7. Decision
The Decision of the Panel is that the disputed Domain Name is confusingly similar to the trademark FERRARI in which the Complainant has rights; that the Respondent has no rights or legitimate interests in the disputed Domain Name; and that the Respondent has registered and is using the disputed Domain Name in bad faith. 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 Name be transferred to the Complainant.
Dr. Clive N.A. Trotman
Sole Panelist
Dated: December 18, 2003
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