Jordan Grand Prix Limited v. Gerry Sweeney

[Indexed as:  Jordan Grand Prix v. Sweeney]
[Indexed as:  jordanf1.com]

WIPO Arbitration and Mediation Center
Adminsitrative Panel Decision

Case No. WIPO D2000-233
Commenced:  6 April, 2000
Judgment:  11 May, 2000

Presiding Panelist:  Sir Ian Barker, QC

Domain name - Domain name dispute resolution policy - Community trademarks - Formula One motor racing team - “Cease and desist” letter - Identical - Confusingly similar - Bad faith Registration - Bad faith use - Intention to deceive - Incorrect belief - No evidence of offering of services.

Complainant is owner of Community Trademarks for “Jordan Grand Prix” in relation to a Formula One motor racing team. Respondent registered the domain name “jordanf1.com.”  Respondent offered to sell the domain name to Complainant.  Complainant responded with a “cease and desist” letter.  

Complainant contends that the domain name is confusingly similar to the Complainant’s trademark, that the Respondent has no legitimate interest in respect of the domain name, and that the Respondent’s offer to sell the domain name constitutes bad faith use.

Respondent has stated that the domain name was registered for the exchange of information, ideas and opinions by primarily Irish motor-racing fans.  The Respondent claims that he never tried to sell, rent or otherwise transfer the domain name registration to the owner of the mark because the Complainant is not the owner of a mark “jordanf1”.

Complainant responded that the expressions “grand prix” and “F1” are synonymous to the public and the public would thereby be confused.

Held, Name should be transferred.

The domain name “jordanf1.com” is confusingly similar to the mark “Jordan Grad Prix.”  In making this determination, a number of principles are relevant.  Where there is a worldwide association of ideas in connection with a particular name or figure, a mark in whatever category will not be allowed which incorporates that particular name or figure.  The name Jordan is well-known internationally as being associated with Formula 1 motor racing.

All surrounding circumstances have to be taken into account, including the circumstances where the applicant’s mark is likely to be used, the relevant market and the character of those involved in the market.  The name “Jordan” and its association with Formula 1 racing will be especially familiar to motor racing enthusiasts worldwide.  

“Confusion” and “confused” need only mix up or perplex the public.  This is distinct from “deceive” which implies the creation of an incorrect belief.  Persons with an interest in motor racing or even a vague knowledge would be confused or perplexed by a website “jordanf1.com”.  

When each mark has a common feature, greater attention needs to be focused on the remaining parts of the marks.  Focusing on the expressions “Grand Prix” and “F1”, confusion must be expected, given the association of both expressions with motor racing.  

There is a real danger of confusion between the domain name and the mark.

There was no evidence that the Respondent, before receiving notice of the dispute, used or demonstrably prepared to use the domain name in connection with a bona fide offering of services without intent for commercial gain.  

The Respondent’s offer to sell the domain name to the Complainant constitutes use in bad faith.  

Policies referred to

Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999

Registration Agreements referred to

Network Solutions Inc. 4.0 Service Agreement

Cases referred to

Radio Corporation Pty Ltd. v. Disney (1937), 57 CLR 448
Polaroid Corporation v. Hannaford and Burton Ltd., [1975] 1 NZLR 566
Hi-Bred Corn Company v. Hy-Line Chick Pty Ltd., [1975] 2 NZLR 50
New Zealand Breweries Ltd. v. Heineken, [1964] NZLR 115
Re Broadhead’s Application (1950), 67 RPC 209
Re Rysta’s Application (1953), 60 RPC 87
General Electric Co. v. General Electric Co. Ltd, [1972] 1 WLR 729; [1973] RPC 297
Berlei (UK) Ltd. v. Bali Brassiere Co. Inc. [1969] 1 WLR 1306; [1969] RPC 472.
Levi Strauss & Co. v. Kimbyr Investments Ltd. [1994] 1 NZLR 332
British Telecommunications Plc and Others v. One in a Million Ltd and Others [1999] 1 WLR 903
Panavision International LP v. Toeppen 141 F.#d. 1315 (9th Cir. 1998)
 

Barker, Panelist: --

1. The Parties

The Complainant is Jordan Grand Prix Limited, a company incorporated in England, with its principal place of business at Silverstone, Northamptonshire, NN12 8TJ, United Kingdom. 

The Respondent is Mr. Gerry Sweeney of Main Street, Loughrea, Republic of Ireland.

2. The Domain Name and Registrar

The domain name at issue is <jordanf1.com>. The domain name is registered with Network Solutions Inc., 505 Huntmar Park Drive, Herndon, Virginia 20170, United States of America ("NSI").

3. Procedural History

The Complaint submitted by Jordan Grand Prix Limited was received on March 30, 2000 (electronic version) and April 3, 2000 (hard copy) by the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center"). 

On or about April 14, 2000, a request for Registrar verification was transmitted by WIPO Center to NSI, requesting it to:

(a) Confirm that a copy of the Complaint had been sent to it by the Complainant as required by WIPO Supplemental Rules for Uniform Dispute Resolution Policy, paragraph 4(a).

(b) Confirm that the domain name at issue is registered with NSI.

(c) Confirm that the person identified as the Respondent is the current registrant of the domain name.

(d) Provide full contact details, i.e., postal address(es), telephone number(s), facsimile number(s), email address(es), available in NSI’s WHOIS database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact for the domain name.

(e) Confirm that the Uniform Domain Name Dispute Resolution Policy was in effect.

(f) Indicate the current status of the domain name.

The Complainant had nominated in its Complaint another provider as the Registrar. The Complainant did not advise WIPO Center that NSI was the Registrar until April 14, 2000.

By email dated April 14, 2000, the Registrar advised WIPO Center as follows:

(a) NSI had received a copy of the Complaint from the Complainant.

(b) NSI is the Registrar of the domain name registration <jordanf1.com>.

(c) Gerry Sweeney is the current registrant of the said domain name. His relevant information is as follows:

Mr. Gerry Sweeney as Registrant, Administrative and Billing Contact
Main Street
Loughrea
Co. Galway
Ireland

Telephone: +353 91 841 407
Fax: +353 91 842 015

Email: sween@iol.ie 

Technical and Zone Contact:

Registrar, Internic 
internic-free@REGISTER.COM USA 

Ph: 212 627 4988
Fax: 212 627 6477

(d) NSI’s 4.0 Service Agreement is in effect.

(e) The domain name registration <jordanf1.com> is in "Active" status.

NSI has adopted the policy for Uniform Domain Name Dispute Resolution adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN"). 

The Respondent has never requested that the domain name at issue be deleted from the domain name database. The Respondent has not sought to terminate his agreement with NSI. The Respondent is accordingly bound by the provisions of the Domain Name Dispute Resolution Policy, i.e., the ICANN policy.

Having verified that the Complaint satisfied the formal requirements of the Uniform Policy and the Uniform Rules, WIPO Center, on April 6, 2000, transmitted by post/courier, facsimile and email a notification of Complaint and Commencement of Administrative Proceedings to the Respondent. A copy of the Complaint was also emailed to NSI and ICANN.

The Complainant elected to have its Complaint resolved by a single panel member: it has duly paid the amount required of it to WIPO Center.

The Respondent was advised that a Response to the Complaint was required within 20 calendar days (i.e., by April 26, 2000). He was also advised that any Response should be communicated, in accordance with the Rules, by four sets of hard copy and by email.

On April 26, 2000, the Respondent filed a Response.

On May 1, 2000, WIPO Center invited the Honourable Sir Ian Barker QC of Auckland, New Zealand, to serve as sole Panelist in the case. It transmitted to him a statement of acceptance and requested a declaration of impartiality and independence. 

On May 4, 2000, the Honourable Sir Ian Barker QC advised his acceptance and forwarded to WIPO Center his statement of impartiality and independence. The Panelist finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplementary Rules.

On May 4, 2000, WIPO Center forwarded to the Honourable Sir Ian Barker QC by courier the relevant submissions and the record.  These were received by him on May 10, 2000. In terms of Rule 5(b), in the absence of exceptional circumstances, the Panel is required to forward its decision by May 18, 2000. 

On May 4, 2000, the Panelist advised WIPO Center pursuant to Rule 12 that he required a Reply to the Response from the Complainant by May 8, 2000. This date was later extended to May 10, 2000. This reply was received by the Panel on May 10, 2000.

The Panel has independently determined and agrees with the assessment of WIPO Center that the Complaint meets the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy as approved by ICANN on October 24, 1999, ("the Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules").

The language of the administrative proceeding is English, being the language of the registration agreement.

4. Factual Background

The Claimant is the owner of Community Trademarks numbered CTM 00442848 and CTM 00672907 for the mark "Jordan Grand Prix" in several classes. The Respondent admits these registrations which were made in 1998 and 1999.

The Complainant owns a Formula One motor racing team which has competed in FIA Formula One World Championships competitions since 1991. Because of the extensive media coverage of motor racing, Formula One-type racing and the associated expression "F1" are well-known worldwide. The Complainant operated since March 1996 a commercial website <jordangp.com>.

On March 8, 2000, the Respondent sent an email to the Complainant’s agent offering to sell the domain name in question before putting it up for auction. He said: "I purchased the website domain ‘www.jordanf1.com’ last year. Given ‘F1’ is synonymous with Formula 1 racing, thought it might be an appropriate web domain for you to have going forward. Would you be interested in purchasing this domain. Would like to give you first option on the purchase of the domain before I put it up for auction ".

The Complainant’s solicitors replied on March 9, 2000 with a "cease and desist" letter indicating an intention to invoke the Dispute Resolution Policy. The Respondent did not reply "due to the unrealistic deadline and threatening nature of the same".

The Complainant’s website has been operating under the domain name <F1.jordan.com> since April 2000. A variety of Jordan merchandise, mainly apparel, is sold on this website. The change of website name was said to have been made for marketing reasons. Various press clippings attached to the Complainant’s Reply show that it is commonly referred to as "Jordan F1".

5. Parties’ Contentions

The Complainant submits that the domain name is confusingly similar to the Complainant’s trademark and its common law rights in the mark. The Respondent is said to have no legitimate interest in respect of the domain name, to have not used it in connection with a bona fide offering of services and not to have been known by the domain name. The Respondent’s offer to sell the domain name to the Complainant constitutes use in bad faith.

The Respondent submits that the domain name <jordanf1.com> is neither identical nor confusingly similar to the trademark "Jordan Grand Prix". Reference to common law rules is not permitted under paragraph 3(b)(ix)(i) of the Rules. He admitted that the Complainant is known as "Jordan Grand Prix".

The Respondent’s stated intention was to ensure that the domain name was registered for no commercial purpose, but rather for the exchange of information, ideas and opinions by primarily Irish motor-racing fans. The Respondent denies that he ever tried to sell, rent or otherwise transfer the domain name registration to the owner of the mark because the Complainant is not the owner of a mark "jordanf1". He characterizes the Complaint as "a clear example of the uncompromising and inequitable behavior adopted by this large, powerful multi-national company towards a single individual".

In reply, the Complainant relied on the Respondent’s admission that the Complainant is known as "Jordan Grand Prix". It has a trademark application pending in respect of the mark "Jordan Grand Prix" for numerous further categories. It submitted that the Respondent’s domain name is confusingly similar to the Complainant’s mark in that the expressions "grand prix" and "F1" are synonymous to the public which would be confused thereby. It pointed out that the Respondent had not used the site for a year, nor had he provided any evidence that it had been established to exchange information amongst fans.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the 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". 

The burden for the Complainant, under paragraph 4(a) of the ICANN Policy, is to show:

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

(b) That the Respondent has no rights or legitimate interests in respect of the domain name.

(c) The domain name has been registered and used in bad faith.

In determining whether the domain name <jordanf1.com> is confusingly similar to the trademark "Jordan Grand Prix", the Panel has regard to various tests in trademark law as to when a mark may not be registered where "the use of which would be likely to deceive or cause confusion …". (The words cited or similar are to be found in trademark statutes in several jurisdictions). Out of many cases, the following principles relevant to the present situation emerge:

Where there is a worldwide association of ideas in connection with a particular name or figure, a mark in whatever category will not be allowed which incorporates that particular name or figure. See Radio Corporation Pty Ltd v Disney (1937), 57 CLR 448, where the
High Court of Australia upheld a Registrar’s refusal of the marks "Mickey Mouse" and "Minnie Mouse" for radio receiving kits and sets.

All surrounding circumstances have to be taken into account, including the circumstances where the applicant’ s mark is likely to be used, the relevant market and the character of those involved in the market. See Polaroid Corporation v Hannaford and Burton Ltd [1975] 1 NZLR 566 and Hi-Bred Corn Company v Hy-Line Chicks Pty Ltd [1978] 2 NZLR 50.

The word "deceive" implies the creation of an incorrect belief and causing "confusion" may go no further than mixing up or perplexing the minds of the purchasing public: New Zealand Breweries Ltd v Heineken [1964] NZLR 115. Where deception or confusion is alleged as to the source of the goods, "deceived" is equivalent to being misled into thinking that the goods bearing the applicant’s mark come from some other source and "confused" indicates being caused to wonder whether that may not be the case (Hi-BredCorn case).

Although the marks must be compared as a whole in determining confusion, when each mark has a common feature, greater attention needs to be focused on the remaining parts of the marks: re Broadhead’s Application (1950), 67 RPC 209, 215.

Allowances must be made for imperfect recollections on the part of members of the public and the effect of careless speech (re Rysta’s Application (1943), 60 RPC 87, 188-9; Polaroid (supra) at 571.

The overall test is one of impression of confusion in the mind of the person making the decision: General Electric Co. v General Electric Co. Ltd [1972] 1 WLR 729, 738: [1973] RPC 297.

Where an application is to be rejected on the ground of confusion, the Court (or Panel) must be satisfied that there is a real danger of confusion (Berlei (UK) Ltd v Bali Brassiere Co Inc. [1969] 1 WLR 1306: [1969] RPC 472).

In the light of the above principles, the Panel concludes:

The name "Jordan" is well-known internationally as being associated with Formula 1 motor-racing.

The name "Jordan" and its association with Formula 1 racing will be especially familiar to motor-racing enthusiasts worldwide.

The words "Grand Prix" are similarly well-known - also in conjunction with the word "Jordan" - to the same section of people.

Persons with an interest in motor-racing or even with a vague knowledge of it would be confused or perplexed by a website <jordanf1.com>. They would think, at least, that the website had some connection with the Complainant.

Such people could easily be confused into thinking that "Jordan Grand Prix" was the same as "jordanf1", given the allowances to be made for faulty recollection and/or careless speech.

Focusing on the expressions "Grand Prix" and "F1" - both of which are used in conjunction with Jordan - confusion must be expected, given the association of both expressions with motor-racing.

The Panel’s overall impression - as a "jury question" - is of a real danger of confusion between the two expressions.

Consequently, the Panel considers that the Respondent’s domain name <jordanf1.com> is confusingly similar to the Complainant’s mark "Jordan Grand Prix".

Paragraph 4(c) of the Policy shows how a Respondent can demonstrate rights or interest in the domain name at issue. Whilst the overall onus of proof rests on a Complainant, nevertheless failure by a Respondent to demonstrate that he comes within paragraph 4(c) can assist the Panel in deciding whether on consideration of all the evidence a Complainant has discharged the onus of proof. The following circumstances in particular, but without limitation, if found by the Panel to be proved, demonstrate rights or legitimate interests in the domain name at issue.

"(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."

The Panel finds that there is no evidence that the Respondent, before receiving notice of the dispute, used or demonstrably prepared to use the domain name in connection with a bona fide offering of services without intent for commercial gain. There is no evidence other than his generalized statements about providing a forum for Irish motor-racing enthusiasts by means of the website. If that were so, one wonders why the Respondent chose "Jordan", knowing, as he must have done as a motor-racing enthusiast, of the Complainant’s reputation. There is no evidence that he has been commonly known by the domain name.

The Respondent has no licence or other legal right in respect of the domain name. The Panel therefore decides that the Respondent has no rights or legitimate interests in respect of the domain name.

Paragraph 4(b)(iii) and (iv) of the ICANN policy document, on which the Complainant relies, states:

"the following circumstances … shall be evidence of the registration and use of the domain name in bad faith:

(iii) You have registered the domain name primarily for disrupting the business of a competitor.

(iv) By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line locations, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of your website or location or of a product or service on your website or location."

The Respondent has offered to sell the domain name to the Complainant. Numerous previous WIPO Panel decisions have shown that such conduct constitutes use in bad faith. Accordingly, the Panel finds that the Respondent has registered and used the domain name in bad faith.

7. Principles of Law Applicable

The law on confusing similarity of trademarks is well-established. It is discussed in the previous section. A useful summary is found in Levi Strauss & Co. v. Kimbyr Investments Ltd [1994] 1 NZLR 332. The summary is based on a consideration of authorities from a number of common law jurisdictions:

"The tests to be applied in deciding whether there was "confusing similarity" were well established. The plaintiffs’ mark as registered must be compared with the defendant’s mark as it appeared in actual use - additions or variations which might be relevant in a claim for passing off would not avoid a trade mark infringement claim. The imperfect recollection of the ordinary customer must be borne in mind. The "idea of the mark" must be carefully considered. Consideration must be given to the circumstances of the trade in which the marks in question were employed. Evidence of actual confusion was not essential, but there must be a likelihood of a number of purchasers or potential purchasers or interested members of the public being confused. It was for the Court to decide the question as a matter of personal impression having due regard to the evidence." (Quoting from headnote).

The legal position in England on domain names of confusingly similar wording to registered trademarks was discussed by the Court of Appeal in British Telecommunications Plc and Others v One in a Million Ltd and Others [1999] 1 WLR 903. The Court there was dealing with domain names identical or confusingly similar to registered trademarks where the domain name holders had tried to sell the names to the trademark owners. Injunctions were issued. This is the situation envisaged by paragraph 4(a)(i) of the Rules.

The English position is similar to that taken in other common law jurisdictions. In the United States there are cases noted by Panelists in other WIPO Center decisions, such as Panavision International LP v Toeppen 141 F.3d. 1315 (9th Cir. 1998). 

The Panel accordingly determines that, under the Policy, the Complainant has proved its case. Accordingly, the Complainant is entitled to the limited relief which this Panel is empowered to give. The Panel’s decision is based primarily on the terms of the Policy cited earlier.

8. Decision

For the foregoing reasons, the Panel decides:

that the domain name registered by the Respondent is identical or confusingly similar to the trademark to which the Complainant has rights;

that the Respondent has no rights or legitimate interests in respect of the domain name; and 

the Respondent’s domain name has been registered and is being used in bad faith. 

Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <jordanf1.com> be transferred to the Complainant.
 
 

Hon. Sir Ian Barker, QC
Presiding Panelist

May 11, 2000

Domain name transferred.