The Complainant is Formula One Licensing B.V., The Netherlands, represented by Wild Schnyder AG, Switzerland.
The Respondent in
WIPO Case No. D2008-1631, regarding <f1energydrinks.com>, is Holding Theunisse, The Netherlands. The Respondent in
WIPO Case No. D2008-1633, regarding <f1drinks.com>, is Louis Theunisse, The Netherlands.
2. The Domain Names and Registrar
The disputed domain names <f1energydrinks.com> and <f1drinks.com> are both registered with DomainPeople, Inc.
3. Procedural History
A Complaint regarding the domain name <f1energydrinks.com> was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 27, 2008 by e-mail and a hardcopy was received on October 30, 2008. On October 28, 2008, the Center transmitted by e-mail a request to DomainPeople, Inc. for registrar verification in connection with the disputed domain name. On October 28, 2008, DomainPeople, Inc. transmitted its verification response to the Center by e-mail, confirming that the Respondent is listed as the Registrant and providing the contact details.
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 November 4, 2008. In accordance with the Rules, paragraph 5(a), the due date for the Response was November 24, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on November 25, 2008.
The Center appointed the undersigned as the sole panelist in this matter on December 5, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence on December 4, 2008, as required by the Center to ensure compliance with the Rules, paragraph 7.
A Complaint regarding the domain name <f1drinks.com> was filed with the Center on October 28, 2008 by e-mail and a hardcopy was received on October 29, 2008. On October 28, 2008, the Center transmitted by e-mail a request to DomainPeople, Inc. for registrar verification in connection with the domain name at issue. On the same date, DomainPeople, Inc. transmitted its verification response to the Center by e-mail, confirming that the Respondent is listed as the Registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Policy, the Rules, and 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 November 4, 2008. In accordance with the Rules, paragraph 5(a), the due date for the Response was November 24, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on November 25, 2008.
The Center appointed the undersigned as the sole panelist in this matter on December 5, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence on December 4, 2008, as required by the Center to ensure compliance with the Rules, paragraph 7.
In both Complaints, the Complainant submitted to the Panel that the Complaints “are combined”. The Complainant mentioned that there is strong reason to believe that Theunisse Holding and Louis Theunisse are the same person or closely related. This assumption is based on the following:
- the domain name <f1energydrinks.com> resolves to the website <f1drinks.com>;
- the Registrar for both domain names is identical;
- the contact details for both domain names are identical.
4. Consolidation of the domain name disputes
The Panel understands the Complainant's statement that the Complaints are combined as a request to the Panel to consolidate the two domain name disputes
WIPO Case No. D2008-1631 and
WIPO Case No. D2008-1633. Pursuant to article 10(e) of the Rules, the Panel shall decide a request of a Party to consolidate multiple domain name disputes in accordance with the Policy and the Rules. According to article 4(c) of the Policy, a panel may consolidate before it any or all such disputes in its sole discretion, provided that the disputes being consolidated are governed by the Policy.
The Panel notes that in both cases the Complainant and the trademarks relied on by the Complainant are the same. Additionally, the Respondents are closely related. The Panel carried out a search in the Dutch Chamber of Commerce and found that Louis Theunisse, Registrant of the domain name <f1drinks.com>, is the managing director and sole shareholder of Theunisse Holding B.V., Registrant of the domain name <f1energydrinks.com>. Furthermore, the Complainant submitted evidence that the domain name <f1energydrinks.com> redirects to the website <f1drinks.com> and the Registrar and contact details for both domain names are identical. Taking into account these facts and the underlying objective of the Policy to provide a speedy and efficient dispute resolution process, the Panel will allow the request of the Complainant and consolidate the disputes.
5. Factual Background
The Complainant is the owner of many trademark registrations worldwide that consist of or include the mark F1. These registrations include the following trademark registrations:
- F1 (device), registered with the World Intellectual Property Organization (“WIPO”) on July 13, 2004, registration number 845571.
- F1, registered with WIPO on December 20, 1999, registration number 732134.
- F1, registered with the Benelux Office for Intellectual Property (“BOIP”) on June 25, 1999, registration number 657310;
- F1 (device), registered with the Office for Harmonization of the Internal Market (“OHIM”) on November 17, 2005, registration number 3934387;
- F1 FORMULA 1 (device), registered with the BOIP on October 6, 2005, registration number 3429396;
The Complainant and its affiliates are the registrants of over a hundred domain names that consist of or contain the F1 trademarks.
The Respondent registered the domain name <f1drinks.com> on February 16, 2008 and the domain name <f1energydrinks.com> on July 6, 2008.
6. Parties' Contentions
A. Complainant
The Complainant contends that it is the owner of the trademark portfolio which comprises the F1 brand and that an affiliate company of the Complainant, Formula One Administration Limited, is the sole and exclusive licensee of the trademarks. The Complainant states that 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”.
The Complainant mentions that Formula 1 motor racing consists of approximately 17 races each year that comprise the “FIA FORMULA ONE WORLD CHAMPIONSHIP”. This championship is an international motor racing series, which was organized for the first time in 1950 and is held in many places throughout the world, amongst others in The Netherlands.
The Complainant argues that the F1 brand (like the FORMULA ONE brand) is internationally very well known if not famous. It claims that the broadcasting of F1 motor racing attracts hundreds of millions of viewers in almost 200 countries. According to the Complainant, each race attracts an average of approximately 50 million television viewers, with a race-only cumulative, annual audience of unique viewers of almost 600 million people.
The Complainant stresses that the trademarks that comprise the F1 brand are used extensively to promote the event and that it uses the trademark actively in licensing and sponsoring deals, allowing use of the mark by third parties against compensation and under strict rules to safeguard the brands integrity.
The Complainant states in both Complaints (which are virtually identical) that the trademark F1 is “basically identical with the disputed domain name”. Referring to WIPO domain name decisions (Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin,
WIPO Case No. D2003-0888 and Diageo Brands B.V., Diageo North America, Inc. and United Distillers Manufacturing, Inc. v. iVodka.com a.k.a. Alec Bargman,
WIPO Case No. D2004-0627), the Complainant states that the addition of the non-distinctive elements, respectively “energydrinks” and “drinks” to the famous and well-known element F1 does not prevent the identity or high similarity. The Complainant argues that, quite to the contrary, the addition of these elements “highlights the brand F1 standing alone” and indicates that the website offers in some way drinks connected to the Complainant's activity and protected under the Complainant's trademark.
The Complainant refers to an OHIM decision (May 11, 2007, opposition B894727), in which the OHIM found that trademark F1 Easy infringed on the trademark F1 FORMULA 1, since the use of the F1 Easy trademark was held to be detrimental to the distinctive character of the F1 trademark. In this decision, the OHIM held that F1 is a known abbreviation for Formula One races so that the public will associate the trademark with the races. The OHIM also considered that the trademark F1 enjoys a high degree of reputation.
Referring to the decision in Bayerische Motoren Werke AG v. Ivan Razin,WIPO Case No. D2005-0341, the Complainant submits that the Respondent does not use the domain names for a bona fide offering of goods and services, since it is obvious that the Respondent's only reason in registering and using the domain names is to benefit from the reputation of the famous trademark F1 for commercial profit. Furthermore, the Complainant contends that there is no evidence that the Respondent is or was commonly known by “F1 drinks” or “F1 energy drinks”, or that the Respondent is making a legitimate commercial or noncommercial use of the domain names.
The Complainant states that the Respondent must have known the Complainant's trademarks at the time of registration of the domain names, since it makes “very aggressive reference to the F1 motor sport themes on the website itself”. The Complainant refers to a screenshot of the website connected to the domain names, which shows an advertisement for “F1 racing energy drink” as well as pictures of a Formula One racing car, the checkered Formula One racing flag and a logo which resembles (parts of) the F1 device trademark. The Complainant also states that the Respondent registered the domain names long after several International registrations for the trademark F1 and long after the trademark F1 had become famous.
The Complainant argues that by using the domain names, the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or of a product or service on the Respondent's website.
The Complainant submits that the Respondent clearly “plays” with the F1 motor racing theme on its website. According to the Complainant, a visit to the Respondent's website shows that in addition to the graphic elements, the sound and motion clearly connected with the F1 racing events are “abused” as well, which would indicate that the Respondent takes active steps to increase consumer confusion. Further, the Complainant contends, referring to evidence, that energy drink brands such as Red Bull are important sponsors for the racing series organized under the Complainant's F1 trademark. The Complainant argues that this fact must have been known to the Respondent who makes clear reference to the motor racing sport on its website.
In view of this, the Complainant finds it evident that the Respondent registered the domain names to attract consumers to its website for commercial gain by creating a likelihood of confusion between its site and the well-known and famous F1 brand.
In addition, the Complainant states that it is part of the Complainant's business to use the well-known status of its F1 brand for licensing purposes. It contends that any third party who uses this trademark as part of a domain name is disrupting this business.
Based on the foregoing, the Complainant requests that the domain names be transferred to the Complainant.
B. Respondent
The Respondent did not file a Response.
7. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant is the owner of worldwide trademark registrations, amongst others European Community trademarks and Benelux trademarks, containing or comprised of the element F1. Since the entire trademark F1 is incorporated in the disputed domain names, the domain names are confusingly similar to the trademarks. The addition of the generic phrases “energydrinks” or “drinks” to the trademark F1 in the domain names does not change this (see Polaroid Corporation v. Jay Strommen,
WIPO Case No. D2005-1005).
B. Rights or Legitimate Interests
The Panel is of the opinion that the Respondent does not have rights or legitimate interests in the domain names.
Based on evidence provided by the Complainant (a screenshot of the webpage), the Panel notes that the domain name <f1energydrinks.com> redirects to the website <f1drinks.com>, where the Respondent promotes its “F1 energy drink” by referring to Formula One racing by depicting a Formula One car and checkered flag. Taking into account the reputation of the F1 trademarks, the incorporation of the entire F1 trademark in the domain names, and the use of the domain names for a website where the Respondent promotes its own products by referring to Formula One, it can be assumed that the Respondent makes use of the likelihood of confusion with the F1 trademarks to promote the sales of its own products. Such use cannot be considered to be a bona fide offering of goods and services, nor can it constitute a legitimate noncommercial or fair use of the domain names.
There is no evidence either that the Respondent has been commonly known by the domain names, or that it was authorized by the Complainant to use the Complainant's trademarks as part of the domain names.
C. Registered and Used in Bad Faith
The Panel finds that the Respondent has registered and is using the domain names in bad faith.
The Panel finds that the Respondent was likely aware of the Complainant and its trademarks, since the Complainant's F1 trademarks are well-known and were registered many years prior to the registration of the domain names. Moreover, the Respondent's website refers to F1 motor racing by, amongst others, the representation of an F1 racing car and a checkered flag. Also, on the website an F1 sign is depicted which resembles (elements of) the F1 device trademark.
The Panel finds that, by using the domain names <f1energydrinks.com> and <f1drinks.com> for a website where an “F1 energy drink” is promoted under reference to F1 motor racing, the Respondent intentionally attempts to attract, for commercial gain, Internet users to its website or another on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.
8. 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 names <f1energydrinks.com> and <f1drinks.com> be transferred to the Complainant.
Wolter Wefers Bettink Sole Panelist
Dated: December 17, 2008
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