Formula One Licensing BV v. Formula One Internet
[Indexed as: Formula One Licensing BV v. Formula One Internet]
[Indexed as: f1.com]
WIPO Arbitration and Mediation Center
Administrative Panel Decision
Case No. D2000-0193
Commenced: 23 March 2000
Judgment: 28 May 2000
Presiding Panelist: William R. Cornish
Domain name Domain name dispute resolution policy Generic Trademark - Identical Confusingly similar Complainants identity Respondents identity Voluntary transfer Ambiguous behaviour Trafficking Bad faith not established.
Complainant is Formula One Licensing BV and its related companies including Formula One Management Ltd and Formula One Administration Ltd. Respondent is Formula 1 Internet. The domain name in issue is f1.com.
Held, Name Not Transferred.
Respondents assertion that the current registrant is no longer owner of the domain name and therefore incorrectly named as Respondent is rejected: ICANN policy includes an embargo on transfers during a dispute procedure such as this one.
Trademarks such as F1 have often been treated in the first instance as signs which are generic: different traders may have a legitimate interest in adopting them. Complainant offers no evidence of trademark registrations for F1. Complainant has not shown that its reputation in F1 is so widely established as to enable the claim that any commercial use of F1 which is in some way connected with auto racing will be taken to imply a connection with Complainant.
Respondent's behaviour is hard to interpret. He has acquired only two other domain names and has not sought to sell any of them. He transferred one of them voluntarily to the FIA in order to protect its interests. He recently agreed to sell, for a large sum of money, F1.com to an apparently independent business, Formula 1. Com Ltd, so it could use the domain name for its already popular website for Championship fans.
In seeking to resolve the conflicting interpretations which have
been offered for Respondents behaviour, certain factors must be kept in
mind. There is no obligation on a domain name registrant to use it for
any purpose, 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 Complainant means by trafficking its objection is
too wide. There is some basis for being suspicious of Respondents explanations
of his actions. However, Complainant has failed to prove the necessary
elements that Respondent had no rights or legitimate interest in
the domain name and that Respondent registered the domain name in bad faith.
Policies referred to
Rules for Uniform Domain Name Dispute Resolution Policy
Cornish, Panelist: -
1. The Parties
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 [email protected]) 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:
[email protected].)
2. The Domain Name and Registrar
The domain name in issue is f1.com, registered by Network Solutions
Inc, of Herndon, Virginia, USA, on March 6, 1995.
3. Procedural History
(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 InterNICs 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 Respondents representatives
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.
4. Factual Background
The first-named Complainant is part of a corporate group which, on
behalf of the Fédération Internationale de lAutomobile (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 Respondents 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.
5. Parties Contentions
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 Complainants 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 Respondents 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.
6. Discussion and Findings
(1) Introductory
The dispute settlement procedure established by the ICANN Policy is
summary in nature; yet it can lead to the Respondents domain name being
transferred to the Complainant. That occurs only when there has been a
finding of bad faith on the Respondents 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 Respondents 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 Complainants
part, this is emphasised in the trade mark design which it has been seeking
to register; on the Respondents 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 Respondents 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 respondents 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 Complainants 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 Complainants 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 Complainants
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 Complainants 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 Complainants
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 purchasers
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 registrants 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 Complainants 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 Complainants agents 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. McDiffetts 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. McDiffetts
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.
7. Decision
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
|