Generic Top Level Domain Name (gTLD) Decisions

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

Case No. D2000-0193

The Complainant: Formula One Licensing BV, (postal address c/o Formula One Management Ltd, 6, Princes Gate, London SW7, United Kingdom, email address c/o mschwimmer@frosszelnick.com) "and its related companies including Formula One Management Ltd and Formula One Administration Ltd [which] shall be referred to collectively as 'Complainant'" (Complaint, Paragraph 2).

The Respondent: Formula 1 Internet (postal address PO Box 3364, San Rafael, CA 94912, USA; administrative contact for the Domain Name, Bruce McDiffett, of the same address; telephone: (415) 389 6149, email address: nebulus@best.com.)

The domain name in issue is <f1.com>, registered by Network Solutions Inc, of Herndon, Virginia, USA, on March 6, 1995.

(1) The Complaint in Case D2000-0193 was filed on March 23, 2000.

(2) The WIPO Arbitration and Mediation Center has found that:

- the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules for the Dispute Resolution Policy;

- payment for filing was properly made;

- the Complaint complies with the formal requirements;

- the Complaint was properly notified in accordance with the Rules, paragraph 2(a);

- a Response to the Complaint was filed in due time; and that

- the Administrative Panel was properly constituted.

As Panelist, I accept these findings, adding the following remarks:

- The complaint identified the Respondent-Registrant as 'Formula One Internet', whereas (following InterNIC's WHOIS Directory) this should be 'Formula 1 Internet'; the difference, however, has not prevented the Respondent from being identified or from responding.

- The Respondent received the complaint only after a delay and was then prevented by a fire at the British Patent Office from submitting evidence as to the current position of certain trade mark applications until three days after the due date of April 15, 2000, on which day the Response was transmitted. Given these exceptional circumstances, I have taken into account the additional information contained in the Respondent's representative's letter of April 18, 2000.

(3) As Panelist, I submitted a Statement of Acceptance and Declaration of Impartiality and Independence.

(4) There have been communications from the representatives of both Complainant and Respondent concerning

- Requests by the Complainant, dated April 20 and 25, 2000, to be allowed to submit further information and evidence; and

- Countervailing requests by the Respondent, dated April 25 and 26, 2000, that such a step should not be allowed, but that, if it is, the Respondent should have a right of reply.

(5) The date scheduled for issuance of a decision is: May 28, 2000.

(6) No extensions have been granted or orders issued in advance of this decision.

(7) The language of the proceedings is English.

The first-named Complainant is part of a corporate group which, on behalf of the Fédération Internationale de l'Automobile ("FIA"), organises the Formula One Auto Racing Championships. These Grand Prix events are held each year at a series of venues around the world and receive wide publicity through the televising of the races and other means. While Formula One Racing has been known in the USA since at least 1950, the event has not been staged there since 1991 and is only to be revived this year. While the Championship has a considerable public following and popularity in Europe, such reputation as it currently has in the USA arises mainly by transmission of foreign broadcasts.

Since the registration of the Respondent's domain name in 1995, it has not been used in any substantial way for commercial purposes, though the Respondent has made certain submissions about use. The administrative contact for the registrant of the domain name is Mr. Bruce McDiffett, who uses "Formula 1 Internet" as a business or similar name, just as he did "First One Co" when registering the domain name initially.

A. Complainant

The Complainant asserts

- that, in particular through its and others' use of the mark "F1" to refer to auto races organised by it or an affiliated company since at least 1950, it has protectible rights in that mark which, in relation to the Respondent, are prior and exclusive;

- that the domain name in issue exactly copies that mark;

- that in consequence the Respondent has no rights or legitimate interests in that domain name;

- that the Respondent registered the domain name in bad faith, as that term is used in the ICANN Uniform Domain Name Dispute Resolution Policy, Paragraph 4(b);

- and that accordingly the Panel should order that the Domain name be transferred to the Complainant.

B. Respondent

The Respondent asserts:

- that since the Complaint is stated to be made not only by the first-named Complainant but also "related companies including Formula One Management Ltd and Formula One Administration Ltd", the Respondent has not been sufficiently informed of the Complainant's identity;

- that the first-named Complainant was incorporated only in 1992 and therefore cannot establish an exclusive right by "common-law use"; and equally it cannot do so because it does not administer Formula One Auto Races;

- that the Respondent has sold the domain name in issue to Formula 1.Com Ltd and is therefore no longer the correct addressee of the Complaint;

- that the Complainant has not established that it has protectible rights in the mark "F1" which are prior and exclusive because the mark is "generic", as demonstrated in particular by attempts to register it as an element in trade marks for a variety of goods in different countries and by usage of it, or of "Formula 1/One," for the provision of various goods and services;

- that the Complainant cannot assert that the Respondent lacked legitimate interest to register and/or use the domain name (a) because others demonstrated an interest in acquiring it for use in independent, legitimate businesses; (b) because the Respondent's administrative contact, Mr. Bruce McDiffett, also registered contemporaneously the domain name, "FIA.com" and later transferred it voluntarily to the FIA; and (c) because Mr. McDiffett intended originally to use the website for a network servicing company (hence the use of the business name First One Co as the original registrant) and did use it as an email address and to host the auction of musical instruments on another site;

- that Mr. McDiffett showed no bad faith since (a) he did not acquire domain names in order to sell them to the Complainant or to engage in other "trafficking"; and (b) when he received offers to buy the domain name, he on several occasions refused to do so; and (c) that when he entered the transaction with Formula 1.Com Ltd already referred to it was the result of an unsolicited approach from that company, and on terms that he will retain a share in its capital and therefore in its legitimate operation as a site for enthusiasts of Formula One auto racing;

- and that accordingly the Complaint should be dismissed, since the relevant grounds set out in the ICANN Policy, Paragraph 4 are not established.

(1) Introductory

The dispute settlement procedure established by the ICANN Policy is summary in nature; yet it can lead to the Respondent's domain name being transferred to the Complainant. That occurs only when there has been a finding of bad faith on the Respondent's part within the meaning given to that term in Paragraph 4 of the Policy. It follows that the Complaint should be found substantiated only when a case is sufficiently made out against a Respondent. If the matter is left in doubt by the statements and accompanying documents put in by the parties, then the Complaint cannot be allowed. Moreover, because it is highly desirable that the proceedings should be expeditious and simple, the Complainant should be expected to make a sufficient case in the initial complaint, rather than through a developing set of exchanges admitted at the discretion of the Panel.

I have considered whether in this case, particularly given the novelty of the Dispute Settlement Process, I should exercise the discretion to call for further information from the parties. Given the novelty of the Procedure, I might have been minded to do so, had I considered that the points on which the Complainant sought to meet the Response were crucial to my decision. I do not find this to be so. As will become apparent, I consider it sufficient for this decision to treat the Complainant formally as Formula One Licensing BV and to assume that it shares in such reputation of "F1" as a trade mark as attaches to the group of companies to which it belongs. Likewise, I do not consider it necessary to receive further evidence about the state of current trade mark applications by the Complainant.

(2) "Ownership" and Registration of the Domain Name

I reject the Respondent's assertion that the current registrant, Formula 1 Internet and the administrative contact behind it, Mr. McDiffett, is no longer "owner" of the domain name and therefore incorrectly named as Respondent. The ICANN Policy is established by the contractual terms of the Registration Agreement and therefore binds the Registrant until a transferee is named on the Register in accordance with the procedures for transfer. These procedures include the embargo on transfers during a pending dispute procedure which is provided for in Paragraph 8 of the Policy. Such an embargo arose in the present proceedings. The Respondent has therefore been correctly identified. However, the agreement by Mr. McDiffett to transfer the domain name to Formula 1.Com Ltd is a matter which I do treat as relevant to the crucial question of bad faith. To this aspect of the disposal of the domain name I shall return.

(3) The Claim to Exclusive Right

The Complainant asserts that its "FI mark is famous in the sense of Article 6bis of the Paris Convention." The Respondent argues that this is not so because the term is generic.

Both parties accept that "F1" is commonly used as an abbreviation for "Formula One/1," particularly in the context of auto racing. On the Complainant's part, this is emphasised in the trade mark design which it has been seeking to register; on the Respondent's part, it appears from its very name. Nonetheless "F1" by itself consists simply of a single letter and numeral. In many trade mark systems, such marks have been treated in the first instance as signs which are "generic" in the sense that different traders may have a legitimate interest in adopting them and so the Response asserts. It thus requires proof of considerable use before the sign will acquire sufficient distinctiveness to justify its registration as a mark for even a narrow class of goods or services. That several traders may have a perfectly proper interest in using "F1" is supported by the Respondent's Exhibit 6, which shows the offers to acquire the domain name made to Mr. McDiffett by F1-Key and Fusion One Inc.

The difficulty of securing trade mark registrations for such a sign is reflected in the fact that the Complaint offers no evidence of trade mark registrations for "F1" by itself, and has shown only registrations of "F1 Formula One" in a design for certain classes of goods (Exhibit B). Even these post-date the registration of the domain name and so are only of indirect relevance to the respondent's legitimate interest and good or bad faith at that date. (It is for that reason that I have considered it not sufficiently relevant to admit further evidence about the course of the Complainant's recent applications for trade mark registration). So far as concerns the general approach, the Respondent has been able to point to apparent difficulties facing others who have sought to include "F1" in design marks which are the subject of applications to the Community Trade Mark Office (Exhibit 5). In addition, it may well be that, in the context of the Complainant's Championships, the term "Grand Prix" has greater significance to the public than "F1" or "Formula One" as an indicator that the Complainant is their organiser. Certainly that term is well evidenced in the voluminous exhibits of television scheduling and the like which the Complainant has filed (Exhibit D).

F1, as an abbreviation of Formula One, may be also treated as generic because it is being used descriptively. As explained in the Complainant's Exhibit G:

"The Formula One races trace their roots back to 1887, when a French magazine organized a reliability trial of horseless carriages. They came into their own in the 1930s, when car makers like Ferrari and Mercedes-Benz began building cars for racing. The name refers to the cars' minimum weight and maximum engine size…" (Scott Miller of The Wall Street Journal)

There is an inherent difficulty, when a term which describes the nature of a sport is taken over by the organisers of events in order to give them a brand image, that the public will partly continue to use the term to describe the sport in general. This makes it difficult to establish how far, as a mark, the term has become "famous".

I conclude that, on the record here presented, the Complainant or its associated companies have shown that in 1995 they had in some countries a reputation in 'F1', standing alone, which distinguishes the Championships as theirs. However, they have not shown that this reputation was so widely established as to give them the right to claim that any commercial use of it which is in some way connected with auto racing will be taken to imply a connection with them, through organisation or licensing. There remained some scope for others to use the term in good faith in commercial and other Internet activities connected with that sport and that freedom gave those others a "legitimate interest" of their own in the mark in the sense of that phrase in the ICANN Policy, Paragraph 4 a (ii). I am therefore not satisfied that there was no way, once Mr. McDiffett knew of the Championships, that he could register the domain name for uses connected with auto racing without infringing the Complainant's exclusive rights. Nor is it clear that the Complainant has any right on the basis of which it could necessarily control the activities of Formula 1.Com Ltd. This is the company to which the Respondent claims to be selling the domain name and the Complainant asserts to be an "unauthorised.website…providing information about Complainant's F1 racing" (Paragraph 10 m)).

(4) The Alleged Lack of Legitimate Interest and Good Faith

The Complainant alleges that Mr. McDiffett, as the person who used the name, Formula 1 Internet to register the domain name, "F1", both registered and used it in bad faith. Mr. McDiffett has behaved in a manner which is hard to interpret. He initially registered the domain using the name, First One Co, intending (according to the explanation in the Response, Paragraph 27) to set up a networking services company linking content provided by others. He has since used the domain to provide email addresses for himself and his mother, and, due to financial hardship, to carry a number of images for the auction of musical instruments on the eBay site. He has rejected unsolicited offers to acquire the registration from enterprises with interests other than in auto racing. He has acquired only two other domain names and has not sought to offer any of them for a price to anyone else. One of them, FIA.com, he instead transferred voluntarily to the FIA in order to protect its interests, a generosity which the FIA gratefully acknowledged. He has recently agreed to sell "F1" to an apparently independent business, Formula 1. Com Ltd, in order that it should use the domain name for its already popular website for Championship fans. For his agreement, he asserts that he was offered either US$250,000 or US$25,000 plus a 0.5% of the purchaser's share capital and chose the latter.

There are curiosities about all this. Mr. McDiffett acknowledges that he is "an ardent enthusiast of auto/motor sport who has demonstrated his concern for the best interests and integrity of the sport as a whole" (Response, Paragraph 28). Why then did he use First One Co. as registrant's name, but then change it to Formula 1 Internet, apparently in order to convey to the public the quality of a service which would not be targeted at the Complainant or be related to the championship or auto/motor sport (Response, Paragraph 27)? He behaved in a protective manner to the FIA. Why, then, did he not offer also to transfer the "F1. Com" domain? He has exhibited evidence that others were sufficiently interested to make offers for that domain name, to which he responded on occasion by suggesting that a higher price was the correct order of magnitude. His account of the unsolicited offer from Formula 1. Com Ltd is offered without other confirmation than that of the initial email from Nicky Morris. There is a dispute about the conversation with the Complainant's agent in which the prior six-figure offer was mentioned, as to whether Mr. McDiffett knew with whom he was dealing and whether he was soliciting an offer from the inquirer. The case of bad faith becomes very much stronger if the Complainant's agent's version of this conversation is accepted and that of Mr. McDiffett is rejected. In this summary procedure it is not possible to resolve the dispute over so crucial an issue one way or the other.

In seeking to resolve the conflicting interpretations which have been offered for Mr. McDiffett's behaviour, certain factors must be kept in mind. There is no obligation on a domain name registrant to use it for any purpose, commercial or otherwise. Nor in general is there any obligation not to transfer it to any other person for a sum exceeding the costs of obtaining and maintaining it. If this is what the Complainant means by "trafficking" its objection is too wide. The Policy Paragraph 4 defines the bad faith which must be made out (so far as is here relevant) as: registering the domain name for the purpose of transferring the registration to the complainant or a competitor for valuable consideration in excess of costs (as defined). There is some basis for being suspicious of Mr. McDiffett's explanations of his actions. However, I am in the end not satisfied that any sufficiently clear case has been made out that he did acquire the "F1.com" domain name primarily for either of these purposes.

The Complaint has failed to prove the necessary elements that the Respondent had no rights or legitimate interest in the domain name and that the Respondent registered the domain name in bad faith. The requested remedies are denied.

William R. Cornish
Panelist

Dated: May 28,2000