The Complainant is Mclaren Racing Limited of Surrey, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Crowell & Moring, LLP, Belgium.
The Respondent is Weinstein Peter of Paris, France. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with 1&1 Internet AG (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 24, 2015. On June 24, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 26, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details, and stating that French is the language of the Registration Agreement for the disputed domain name. On July 1, 2015, the Center sent a communication to the Parties, inviting the Complainant to provide satisfactory evidence of an agreement between the Parties that the proceedings should be conducted in English, to submit the Complaint translated into French, or to submit a request that English be the language of proceedings, as well as inviting the Respondent to make submissions in this regard. The Complainant filed a request that English be the language of proceedings on July 1, 2015. The Respondent did not file any submissions in this regard.
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 the Respondent of the Complaint, and the proceedings commenced on July 9, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 29, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 30, 2015.
The Center appointed Andrea Mondini as the sole panelist in this matter on August 3, 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.
The Complainant filed the Complaint in English and requested that these proceedings be conducted in English noting in particular that the website linked to the Disputed Domain Name is in English which shows that the Respondent is able to communicate in English. The Respondent did not object within the deadline set by the Center nor otherwise reply. Therefore, the Panel infers that the Respondent has no objection to the use of the English language and decides that these proceedings shall be conducted in English. 4. Factual Background
The Complainant is the holder of several trademarks for MCLAREN, such as the Community Trademark (CTM) registration no. 000584110 registered on January 27, 1999, in classes 9, 14, 16, 18, 25, 28, 41 and 42.
The Disputed Domain Name was registered on February 27, 2015. 5. Parties’ Contentions A. Complainant
In essence, the Complainant contends the following:
The Complainant is a wholly owned subsidiary of the McLaren Technology Group, which uses its Formula 1 expertise to develop new applications for consumer road cars, transport systems, energy and sport systems.
The Complainant’s MCLAREN trademark is registered in numerous countries, is very well known all over the world and is used in relation to racing activities. The Disputed Domain Name incorporates the Complainant’s MCLAREN trademark in its entirety. The addition of the generic term “Formula 1” increases the level of confusion. As a result, the Disputed Domain Name is confusingly similar to the Complainant’s MCLAREN trademark.
The Disputed Domain Name is redirecting to a webpage of OVH, an Internet service provider, and is also used for email purposes. The Respondent is not commonly known by the Disputed Domain Name. The Complainant has not authorized the Respondent to use its trademark MCLAREN. In the absence of any license or authorization, no bona fide or legitimate use of the Disputed Domain Name could reasonably be claimed. Moreover, the Disputed Domain Name is used for email purposes mentioning the Complainant’s group and registered office address and the persons using an email address linked to the Disputed Domain Name are identifying themselves as being employed by the Complainant’s group, which is not the case. The Complainant contends that all this shows that the Respondent has no rights or legitimate interests in the Disputed Domain Name.
The Disputed Domain Name was registered in bad faith because the Complainant’s trademark is so well known that the Respondent could not reasonably have been unaware of the MCLAREN trademark at the time of registration. The fact that the persons using an email address linked to the Disputed Domain Name are fraudulently identifying themselves as being employed by the Complainant’s group shows that the Disputed Domain Name is being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The Disputed Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) The Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has shown that it is the holder of several trademarks for MCLAREN, including the CTM registration no. 000584110 registered on January 27, 1999, in classes 9, 14, 16, 18, 25, 28, 41 and 42.
The addition of the term “Formula 1” to the trademark MCLAREN does not dispel, but actually increases the confusing similarity because it refers to the Complainant’s field of business.
Therefore, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s MCLAREN mark in accordance with Paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
Although the complainant bears the ultimate burden of establishing this element of paragraph 4(a) of the Policy, panels have recognized that this could result in the potentially impossible task of proving a negative proposition. Such a proof requires information that is primarily within the knowledge of the respondent. Therefore, the common view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the Complainant has established a prima facie showing indicating the absence of such rights or legitimate interests. See, e.g., Document Technologies Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270.
The Respondent is not commonly known by the Disputed Domain Name. The Complainant has declared that it has not authorized the Respondent to use its trademark MCLAREN. The Respondent has not contested this contention. Moreover, the Claimant has prima facie shown that the Disputed Domain Name is being used for email purposes mentioning the Complainant’s group and registered office address and the persons using an email address linked to the Disputed Domain Name are identifying themselves as being employed by the Complainant’s group, which is not the case. Again, the Respondent has not contested this allegation.
Therefore, the Panel finds that the Respondent has no rights or legitimate interests in the disputed Domain Name. C. Registered and Used in Bad Faith
The Complainant’s MCLAREN mark is highly distinctive and well known internationally. Thus the Respondent could not have ignored the Complainant’s rights at the time of registration of the Disputed Domain Name, particularly considering that it added the term “Formula1” which specifically refers to the Complainant’s business.
The fact that the persons using an email address linked to the Disputed Domain Name are fraudulently identifying themselves as being employed by the Complainant’s group shows that the Disputed Domain Name is being used in bad faith.
Therefore, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith. 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 Disputed Domain Name be transferred to the Complainant1 .
Andrea Mondini
Sole Panelist
Date: August 5, 2015
1 This transfer order is without prejudice to any rights that might be asserted as to the Disputed Domain Name by a party claiming trademark rights in “Formula 1”.
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