WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Formula One Licensing B.V. v. N/A Case No. D2009-0217 1. The Parties
Complainant is Formula One Licensing B.V. of Amsterdam, The Netherlands, represented by Wild Schnyder AG, Switzerland.
Respondent is N/A of London, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 19, 2009. On February 19, 2009, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On February 19, 2009, Tucows Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that 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 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 February 25, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 17, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on March 18, 2009.
The Center appointed Torsten Bettinger as the sole panelist in this matter on April 1, 2009. 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
Complainant is owner of the trademark portfolio that comprises the F1 brand. An affiliate company of Complainant, Formula One Administration Limited (“FOA”) 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) who established the Championship in 1950. FORMULA 1 motor racing consists of a series of approximately 17 races each year including one race in the UK, where Respondent is located.
Complainant owns a number of trademark registrations protecting the mark F1 in numerous countries worldwide, inter alia:
- International registration no. 732134 F1 with priority of December 20, 1999;
- International registration no. 903697 F1 with priority of September 22, 2006; and
- International registration no. 845571 F1 & design with priority of July 13, 2004.
Complainant's F1 trademarks have been considered to be well-known by prior panels (See Formula One Licensing B.V. v. Holding Theunisse,WIPO Case No. D2008-1631; Formula One Licensing B.V. v. Louis Theunisse,WIPO Case No. D2008-1633).
Furthermore, Complainant or related companies own a number of domain names with the element F1, above all .
The disputed domain name was registered on July 27, 2008. It is not actively used in connection with a website.
After having discovered the domain name registration in late 2008, Complainant contacted its domain name managers and asked them to arrange the transfer of the domain name for a reasonable price, compensating Respondent for out of pocket expenses. In a telephone conversation the administrative contact Mr. Papakostas said that he would not consider any offer less than “4 digits”. Complainant made an offer of GBP 1000 which was rejected.
On February 10, 2009, a certain Mr. Rafael Serrano contacted Complainant's agent, claimed to be the owner of the disputed domain name and offered the domain name for sale for the price of GBP 15,000. Complainant rejected this offer. 5. Parties' Contentions A. Complainant
Complainant asserts that each of the elements specified in paragraph 4(a) of the Policy has been satisfied.
In reference to the element in paragraph 4(a)(i) of the Policy, Complainant argues that the disputed domain name is confusingly similar to its F1 marks as it fully includes the mark F1 and that the element “rocks” is a dictionary word referring to a positive effect of something and therefore is merely descriptive.
In reference to the element in paragraph 4(a)(ii) of the Policy, Complainant contends that none of the situations described in paragraph 4(c) of the Policy can be established in this case. Complainant states that
- Respondent has no rights or legitimate interests in the name F1;
- there is no evidence that Respondent is or was commonly known by the trademark F1 ROCKS;
- there is no evidence that Respondent is making a legitimate commercial or non-commercial use of the domain; and
- Complainant never gave consent to such use of its trademarks.
In reference to the element in paragraph 4(a)(iii) of the Policy, Complainant asserts that
- the trademark F1 is exceptionally famous and that therefore Respondent must have known Complainant's trademarks at the time of registering the domain name;
- Respondent tried to conceal its identity by registering the disputed domain name in the name of “N/A” instead of its real name;
- Respondent tried to sell the disputed domain name for the amount of GBP 15,000 which is much above out of pocket expenses; and
- Respondent has acted in bad faith by registering a domain name including a well-known trademark and trying to profit from its fame by reselling it to Complainant. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the domain name is used or other marketing and use factors, usually considered in trademark infringement (See Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-l698; Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. D2001-0110; Dixons Group Plc v. Mr. Abu Abdullaah‚WIPO Case No. D2001-0843; AT&T Corp. v. Amjad Kausar,WIPO Case No. D2003-0327; BWT Brands, Inc and British American Tobacco (Brands), Inc v. NABR,WIPO Case No. D2001-l480; Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505).
The disputed domain name wholly incorporates Complainant's distinctive and well-known trademark F1, which is used in connection with motor sports and related goods and services. The fact that the word “rocks” is added to Complainant's trademark does not eliminate the similarity between Complainant's trademark and the disputed domain name, as “rocks” is a descriptive component of the disputed domain name which is used as intransitive in order to excel something (e.g. “This band rocks”). In numerous cases, it has been held that a domain name that wholly incorporates a complainant's registered mark may be sufficient to establish confusing similarity for purposes of the Policy despite the addition of descriptive words to such mark.
It is also well established that the specific top level of a domain name such as “.com”, “.org” or “.net” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429).
The Panel thus finds that the domain name is confusingly similar to the trademark in which Complainant has exclusive rights and that Complainant has established the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy requires Complainant to prove that Respondent has no right or legitimate interest in the disputed domain name. However, it is consensus view among panelists that if complainant makes a prima facie case that respondent has no rights or legitimate interests, and respondent fails to show one of the three circumstances under paragraph 4(c) of the Policy, then respondent may lack a legitimate interest in the domain name.
Complainant asserted that Respondent has neither a license nor any other permission to use Complainant's trademark F1. The Panel thus finds that Complainant has made a prima facie case showing that Respondent has no rights or legitimate interests in the disputed domain name which wholly incorporates Complainant's distinctive and well-known trademark F1.
Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the domain name and has not denied Complainant's assertions in any way.
Under these circumstances, the Panel takes the view that Respondent has no rights or legitimate interests in the domain name and that the requirement of paragraph 4(a)(ii) is also satisfied. C. Registered and Used in Bad Faith
The Panel is also convinced that Respondent registered and used the domain name in bad faith.
Complainant's distinctive trademark F1 is widely known. Given the worldwide broad media coverage of the Fia Formula One World Championship, in particular in the UK where Respondent is located, it is inconceivable that Respondent registered the domain name being unaware of Complainant's rights in its F1 marks.
Furthermore, the fact that Respondent offered the disputed domain name to Complainant for the amount of GBP 15,000 indicates that Respondent has registered the disputed domain name primarily for the purpose of selling it to the Complainant for valuable consideration in excess of Respondent's documented out-of-pocket costs directly related to the domain name.
This constitutes evidence of bad faith registration and use under paragraph 4(b)(i) of the Policy and conclusively establish that the disputed domain name has been registered and is being used in bad faith (See CBS Broadcasting, Inc. v. Gaddor Saidi,WIPO Case No. D2000-0243).
It is well established that a domain name registration for the purpose of selling the domain name to the respective complainant for a high amount establishes that the disputed domain name has been registered and is being used in bad faith (see Paul Plumadore, James Tindell, River Road Antiques, Ltd v. William Kilgore,WIPO Case No. D2007-1922; CBS Broadcasting, Inc. v. Gaddor Saidi, supra; Telefonaktiebolaget L.M Ericsson v. iNuntius Inc., WIPO Case No. D2005-0732).
The fact, that Respondent offered the disputed domain name after it received an offer from Complainant does not hinder a finding of bad faith under paragraph 4(b)(i) of the Policy because Respondent's counteroffer exceeded Complainant's offer by far
American Home Products Corporation and Genetics Institute, Inc. vs. Global Produtions [sic], WIPO Case No. D2000-0456; Japan Tobacco Inc. v. Yoshiki Okada, WIPO Case No. D2000-0492).
Moreover, Respondent's default in this proceeding reinforces an inference of bad faith. If Respondent had arguments that it acquired the domain name in good faith, and had good faith bases for using the domain name, it should have asserted them.
Accordingly, the Panel concludes that Respondent registered and uses the disputed domain name in bad faith and that also the requirement of paragraph 4(a)(iii) of the Policy has been met. 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 name be transferred to Complainant.
Torsten Bettinger
Sole Panelist
Dated: April 16, 2009
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