DECISION

CPFilms Inc. v. Markus Herbig

Claim Number: FA0212000137673

PARTIES

Complainant is CPFilms Inc., Martinsville, VA (“Complainant”) represented by Paul D. McGrady, of Ladas & Parry, Digital Brands Practice.  Respondent is Markus Herbig, Wiesbaden, GERMANY (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <wwwformulaone.com>, registered with Network Solutions, Inc.

PANEL

The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 20, 2002; the Forum received a hard copy of the Complaint on December 23, 2002.

On December 30, 2002, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <wwwformulaone.com> is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name.  Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On December 30, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 20, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@wwwformulaone.com by e-mail.

An informal Response was received on January 10, 2003.

Complainant’s additional submission was received on January 15, 2003.

On January 29, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

The  <wwwformulaone.com> domain name is confusingly similar to Complainant's FORMULA ONE MARKS.  Respondent has no rights or legitimate interests in the disputed domain name.  Respondent registered and used the disputed domain name in bad faith.

B. Respondent

Respondent argues that the <wwwformulaone.com> domain name is not confusingly similar because the addition of “www” distinguishes the domain name from Complainant’s mark.  Respondent also notes that FORMULA 1 or FORMULA ONE refers to the motorsport and “www” refers to the Internet; and, therefore, Respondent’s website signifies the “Formula 1” motorsport on the Internet.  Respondent argues that his German motorsport homepage does not conflict with Complainant’s products.  Respondent contends that the term FORMULAONE is a generic term for the “motorsport Formula 1” and is in widespread use by others.

C. Additional Submissions

Complainant contends the real issue is not whether third parties other than Respondent have rights or legitimate interests in a domain name containing the element FORMULA ONE.  Rather, the real issue is whether Respondent has rights or legitimate interests in a domain name containing the elements “www” and FORMULAONE when such domain name is a mere “typo” of Complainant’s domain name and common law service mark.  Respondent’s offer in his Response to sell the domain name to Complainant for EU1,000 (about US$1,045) constitutes bad faith.

FINDINGS

Complainant, CPFilms, Inc., holds trademark registrations in Australia, Mexico and the European Community for FORMULA ONE and has applied for a trademark in the United States.  Most of the Complainant’s marks cover tinted, laminated and/or reflective plastic automotive window film to be installed on automobiles, trucks and boats and related services and marketing materials.  Complainant also is the registrant and user of the generic top-level domain name <formulaone.com>.  Complainant provides the Formula One goods and services throughout the United States and in Canada, and via the Internet.  New car dealers frequently recommend the Formula One goods and services.  Complainant’s history under its FORMULA ONE MARKS began in 1993.  Complainant’s FORMULA ONE MARKS have earned recognition, a good name, and a reputation for high quality. 

Respondent has no trademark or other intellectual property rights to the domain.  Respondent does not use the element FORMULA ONE in his name.  Respondent’s sole use of the domain name has been to divert Complainant’s customers to another website F-1.info, a domain name owned by a third party and where car racing tickets and travel packages, focusing primarily on the European Community are sold.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

Complainant has demonstrated its rights in its FORMULA ONE mark through proof of trademark registrations in Australia, Mexico and the European Community.  Respondent’s <wwwformulaone.com> domain name is confusingly similar to Complainant’s mark because it incorporates Complainant’s entire mark and merely adds the prefix “www.”  Respondent’s conduct of adding the prefix “www” is typosquatting because the disputed domain name takes advantage of a common typographical error made by Internet users when entering Complainant’s domain name.  The addition of the “www” prefix does not add any distinct characteristics capable of overcoming a claim of confusing similarity.  See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that Respondent’s domain name <wwwbankofamerica.com> is confusingly similar to Complainant’s registered trademark BANK OF AMERICA because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a Respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to Complainant’s marks).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Complainant argues that Respondent is not using the <wwwformulaone.com> domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) because Respondent is using the domain name to divert Internet users to <f-1.info>, a website selling car racing tickets and travel packages.  The use of Complainant’s mark in order to divert Internet users to an unrelated website for Respondent’s commercial gain does not give rise to rights or legitimate interests pursuant to Policy ¶ 4(c)(i) or ¶ 4(c)(iii).  See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks); see also AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding that use of the domain name to direct users to other, unconnected websites does not constitute a legitimate interest in the domain name).

Furthermore, Respondent’s offer to sell the domain name to Complainant for EU1000 suggests lack of legitimate interest.  See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to sell the domain name suggests it has no legitimate use); see also Vapor Blast Mfg. Co. v. R&S Tech., Inc., supra (“Respondent’s willingness to transfer the domain name to Complainant as reflected in its Response is evidence that it has no rights or legitimate interests in the domain name.”).

Respondent is not commonly known by the FORMULA ONE mark or <wwwformulaone.com>.  Respondent does not own any trademarks or service marks.  Respondent has no rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent is engaged in typosquatting because <wwwformulaone.com> utilizes a common spelling error to divert Internet traffic to <f-1.info>. This practice of “typosquatting” has been recognized as a bad faith use of a domain name under the UDRP pursuant to Policy ¶ 4(b)(iv).  See e.g. AltaVista Co. v. Stoneybrook, D2000-0886 (WIPO Oct. 26, 2000) (awarding <wwwalavista.com>, among other misspellings of altavista.com, to Complainant); Dow Jones & Co. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (awarding domain names <wwwdowjones.com>, <wwwwsj.com>, <wwwbarrons.com> and <wwwbarronsmag.com> to Complainants).

Furthermore, Respondent registered and used the domain name <wwwformulaone.com> in bad faith with knowledge of Complainant’s rights in the FORMULAONE mark.  When Respondent registered and began using the domain name, Respondent knew or should have known that use of the domain name in this fashion would violate Complainant’s trademark rights in the FORMULAONE mark.  See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum, April 17, 2000) (evidence of bad faith includes actual or constructive knowledge of commonly known mark at the time of registration). 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be hereby granted.

Accordingly, it is Ordered that the domain name <wwwformulaone.com> be transferred from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: February 7, 2003

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