Formula One Licensing BV v. HyeongJeon, Gim [2004] GENDND 751 (14 June 2004)

The Complainant is Formula One Licensing BV of Amsterdam, Netherlands, represented by Wild Schnyder AG of Zurich, Switzerland.

The disputed domain name <formula-1.net> is registered with Network Solutions, LLC.

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 18, 2004. On March 18, 2004, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On March 19, 2004, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and billing contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 March 25, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was April 14, 2004. The Respondent did not submit any response. At the request of the Complainant, the proceedings were suspended until May 22, 2004, in order for the parties to attempt to negotiate a settlement. At the further request of the Complainant, the proceedings were recommenced upon failure to reach a settlement. Accordingly, the Center notified the Respondent’s default on June 2, 2004.

The Center appointed Manuel Moreno-Torres as the sole panelist in this matter on June 9, 2004. 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.

Complainant is owner of the trademark portfolio that comprises the FORMULA 1 brand. An affiliate company of Complainant, Formula One Administration Limited (“FOA”), is the commercial rights holder and commercial organiser of the FORMULA 1 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. FOA is Complainant’s sole and exclusive licensee of the trademarks owned by Complainant. Formula One Management Limited (“FOM”) manages FOA’s business as agent and business manager.

The Complainant owns, between others trademarks, the International Trademark Registration No. 714322 accepted in most classes of goods and services of the Nice Classifications.

The trademarks that comprise the FORMULA 1 brand are used extensively to promote the event and are shown throughout the racing venue, on and off the track. Complainant owns hundreds of trademark registrations worldwide consisting of or including the elements FORMULA 1 and/or FORMULA ONE. Furthermore, a number of domain names consisting of or including the element FORMULA 1 are controlled by Complainant and by FOM, a related company of the Complainant.

FOM, a related company of the Complainant, is the registrant of and runs the website at “www.formula1.com,” the Official Website of FORMULA 1. This website highlights many of the Complainant and its related companies’ activities and its worldwide presence.

The trademark is basically identical with the disputed domain name. The only difference is the “-” which cannot be pronounced and will not have any relevant influence on the overall appearance of the sign.

There is no recognizable element showing that Respondent is or was commonly known by the domain name nor is there any evidence that Respondent is making legitimate non-commercial use of the domain name.

The Respondent contacted clients through their e-mail contact of “www.formula1.com” with the heading “www.formula-1.net is for sale.”

In order for the Panel to decide to grant the remedy of transfer of a domain name to a Complainant under the Policy, it is necessary that the Complainant prove, as required by Paragraph 4(a) of the Policy, that:

(i) the contested domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

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

The fact that the Respondent has not provided a Response to the Complaint does not relieve the Complainant of the burden of proving its case. In the absence of a Response, Paragraph 5(e) of the Rules expressly requires the Panel to “decide the dispute based upon the complaint.” Under Paragraph 14(a) of the Rules in the event of such a “Default” the Panel is still required “to proceed with a decision on the complaint,” whilst under Paragraph 14(b) it “shall draw such inferences therefrom as it considers appropriate.” This dispute resolution procedure is accepted by the domain name registrant as a condition of registration. Therefore, a registrant should not gain any evidentiary benefit from its failure to participate.

	Home \| Databases \| WorldLII \| Search \| Feedback Generic Top Level Domain Name (gTLD) Decisions

Thus, where a party fails to present evidence in its control, the Panel may draw adverse inferences regarding those facts. (Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004; State of Wisconsin v. Pro-Life Domains, Inc., WIPO Case No. D2003-0432). Here, since Respondent has defaulted, it is appropriate to accept the facts asserted by Complainant and to draw adverse inferences of fact against Respondent.

This Panel is satisfied that the Complainant has very extensive rights in the trademark FORMULA 1 throughout the world.

The Complainant asserts that the insertion of a dash between the word and the number does not alter the visual or phonetic identity of the expression FORMULA 1. Therefore, the Domain Name is virtually identical and/or confusingly similar to some or all of the FORMULA 1 trademarks.

This Panel agrees with this view. The addition of a dash between the letter and the number which integrates the trademark does not alter the way the Domain Name is pronounced and cannot, in context, differentiate it from the expression without the dash. The overall impression given by the Domain Name is that it is identical to the trademark FORMULA 1, and the ‘.com’ gTLD is incapable of distinguishing between the two.

The Panel finds that the Domain Name is identical or, at the very least, confusingly similar to a trademark in which the Complainant has rights.

The Respondent has asserted no rights or legitimate interests in the Domain Name and, without any evidence to the contrary, the Panel cannot presently conceive of any legally sound basis on which such an assertion might be made. The Panel has seen no evidence that any of the situations in paragraph 4(c) of the Policy apply in the case of the Respondent and accepts the view that the simple act of registering a domain name does not grant the registrant a legitimate interest in that domain name.

The Panel accepts the Complainant’s contention that the FORMULA 1 trademark is well known in a number of countries throughout the world. The Complainant has stated that it has not authorized the Respondent to use any of the FORMULA 1 trademarks and the Panel has seen no evidence to the contrary. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests regarding the Domain Name for the purposes of paragraph 4(a)(ii) of the Policy.

For the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) provides circumstances, in particular but without limitation, which if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

Based on the evidence submitted, the Panel finds that the Respondent primarily acquired the disputed domain name for the purposes of selling, renting or otherwise transferring the domain name registration to the Complainant or any third person. Thus, the e-mail transmitted to the Complainant offering, for an out-of-pocket cost, the disputed domain name allows this Panel to find that <formula-1.net> has been registered in bad faith for the purpose of the Policy.

The Policy requires the Complainant to demonstrate both that the disputed domain name was registered and that it is being use in bad faith. The disputed domain name resolves to an “under construction” site which has no connection with the trademark “FORMULA 1” and where this Panelist surprisingly discovered the Complainant´s solicitor´s e-mail address.

This Panel finds that the offer of sale, the inactive holding of the Domain Name by the Respondent and the appearance of the Complainant’s solicitor’s e-mail address, infers the use in bad faith of the disputed domain name.

The Complainant, therefore, has established this element. The Panel finds that the Respondent registered and is using the disputed domain name in bad faith.

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, <formula-1.net> be transferred to the Complainant.

Generic Top Level Domain Name (gTLD) Decisions

Formula One Licensing BV v. HyeongJeon, Gim [2004] GENDND 751 (14 June 2004)

World Intellectual Property Organization