WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Formula One Licensing B.V. v. Ismail Altunzade, Goldzade CV Case No. D2009-0797 1. The Parties
Complainant is Formula One Licensing B.V. of Amsterdam, the Netherlands, represented by Wild Schnyder AG, Switzerland.
Respondent is Ismail Altunzade, Goldzade CV of Winschoten, the Netherlands. 2. The Domain Name and Registrar
The disputed domain name is registered with 1&1 Internet AG. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 17, 2009. On June 17, 2009, the Center transmitted by email to 1&1 Internet AG a request for registrar verification in connection with the disputed domain name. On June 18, 2009, 1&1 Internet AG transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. As the disputed domain name was set to expire on July 29, 2009, the Center requested 1&1 Internet AG to inform the Center whether any action on the part of the parties was required to keep the disputed domain name under registrar lock. On July 1, 2009, 1&1 Internet AG informed the Center that the parties did not have to take any action and that 1&1 Internet AG would keep the disputed domain name under registrar lock. 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 June 24, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 14, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on July 15, 2009.
The Center appointed Dinant T.L. Oosterbaan as the sole panelist in this matter on July 28, 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, 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), which established the Championship in 1950. FORMULA 1 motor racing consists of a series of approximately 17 races each year. In the Netherlands, for many years, races have been held at the race track of Zandvoort.
The trademarks that comprise the F1 brand are used extensively to promote the event and are shown throughout the racing venue, on and off track and in connection with the television broadcasting.
Complainant owns a large number of worldwide trademark registrations consisting of or including the element F1, including a European Community Trademark with number 3429396 of 6.10.2005.
Complainant's F1 trademarks have been recognized by prior panels as being well known. (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. D2008-1631 and Formula One Licensing B.V. v. N/A, WIPO Case No. D2009-0217).
Furthermore, Complainant or related companies own a number of domain names with the element F1, including .
Complainant is using its trademarks actively in licensing and sponsoring deals, allowing use of the famous mark on goods or services of third parties against compensation and under strict rules to safeguard the brands integrity.
The disputed domain name was registered on July 29, 2008. 5. Parties' Contentions A. Complainant
According to Complainant the domain name of Respondent is identical or confusingly similar to the trademarks of Complainant. Complainant argues that its trademarks are basically identical with the disputed domain name. The only difference is that between the “F” and the “1” an element “one” is added. To combine the well-known trademark F1 with the element “one” does not change the element F1 at all. According to Complainant on the website “www.” one can see, that the “F” and the “1” are written together and the “one” is just below the F1. Both “F” and “1” are printed in big black letters and the “one” comes in between these two letters in very small white letters. This picture is almost the same as used Complainant's own “” website.
According to Complainant Respondent has no right or legitimate interest in the disputed domain name. Complainant argues that the domain name was registered by Respondent on July 29, 2008 only. This was long after the F1 trademarks had become famous. There is no evidence that Respondent is or was commonly known by a trademark F-ONE-1 nor is there any evidence that Respondent is making legitimate commercial or non-commercial use of the domain. Complainant never gave consent to such use. In addition, it is clear that Respondent must have known Complainant's trademark at the time of registering the domain name, as Respondent originally filed Benelux application FORMULA 1 (word) No. 1142309 on September 3, 2007. Thereon Complainant sent Respondent a cease-and-desist letter whereon Respondent withdrew that application. In consequence Respondent asked Complainant in a formal letter of October 29, 2007 for a license to use the FORMULA 1 and F1 Logo.
Finally, Complainant argues that the domain name was registered and is being used in bad faith. Complainant mentions that a screenshot of the website of June 9, 2009 shows that Respondent is advertising an energy drink under the name Fone1. According to Complainant it is common knowledge that energy drink brands are important sponsors of F1 racing. In addition to the graphic elements, the sound and motion clearly connected with the F1 racing events are abused as well. As a consequence, Respondent not only misappropriates Complainant's famous trademark, but in addition takes active steps to increase consumer confusion by playing the F1 motor sports sound and pictures on the website. It is part of Complainant's business to use the well know status of its brand F1 for licensing purposes. Any third party who uses this trademark as part of a domain name is disrupting this business and attracting customers who will be under the wrong impression that such conduct is under the sponsorship, affiliation or endorsement of Complainant. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Complainant is the owner of multiple trademark registrations, including European Community and Benelux trademarks, containing the element F1. In view of the fact that the important F1 element of the trademark of Complainant is part of the domain name, this Panel finds the domain name to be confusingly similar to the trademark (see e.g., Formula One Licensing B.V. v. Holding Theunisse., WIPO Case No. D2008-1631 and Formula One Licensing B.V. v. N/A, WIPO Case No. D2009-0217). The addition of the element “one” in the domain name does not change this conclusion. B. Rights or Legitimate Interests
In the opinion of the Panel Complainant has made a prima facie case that Respondent lacks rights or legitimate interest in the domain name. This is particularly true as Respondent is not making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the famous mark of Complainant. Based on the evidence provided by Complainant Respondent promotes or intends to promote its Fone1 Energy Drink, as appears from a screenshot of the website connected to the disputed domain name by reference to a racing environment. Respondent makes use of the likelihood of confusion with the trademark of Respondent, which cannot be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name. In addition, Respondent was not commonly known by the domain name nor has it acquired trademark rights. Under these circumstances the Panel finds that Respondent has no rights or legitimate interest in the domain name. C. Registered and Used in Bad Faith
The Panel finds that the disputed domain name has been registered and is being used in bad faith. This is particularly true as Respondent in its letter of October 29, 2007 requested a license of the F1 trademark of Complainant and was therefore aware of the trademark rights of Complainant when registering the disputed domain name in 2008. In addition, the website of Respondent is advertising its Fone1 Energy Drink in a racing environment.
The Panel finds that the above elements mean that Respondent intentionally attempts to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the mark of Complainant as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product on its website or location. 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.
Dinant T.L. Oosterbaan
Sole Panelist
Dated: August 5, 2009
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