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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Formula One Licensing B.V. v. Holding Theunisse

Case No. D2009-0760

1. The Parties

Complainant is Formula One Licensing B.V. of Amsterdam, the Netherlands, represented by Wild Schnyder AG, Switzerland.

Respondent is Holding Theunisse of Berghem, the Netherlands, represented by Advocaat Van Tongeren, the Netherlands.

2. The Domain Name and Registrar

The disputed domain name <f1racingdrinks.com> is registered with DomainPeople, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 10, 2009. On June 10, 2009, the Center transmitted by email to DomainPeople, Inc. a request for registrar verification in connection with the disputed domain name <f1racingdrinks.com> (the "Domain Name"). On June 22, 2009, DomainPeople, Inc. transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on June 23, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 13, 2009. The Response was filed with the Center on July 8, 2009.

On July 15, 2009, Complainant filed a Statement to Respondent`s response, and on July 16, 2009, the Center acknowledge receipt thereof and referred to the Rules, paragraph 10(d) which provide that it is to the Panel`s discretion to consider it.

The Center appointed Alfred Meijboom as the sole panelist in this matter on July 17, 2009. 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.

4. Factual Background

Complainant is owner of the trademark portfolio that comprises the F1 brand. An affiliate company of Complainant, Formula One Administration Limited ("FOA") is the commercial rights holder and commercial organizer of the FORMULA 1 F1 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.

Complainant owns a number of trademark registrations protecting the mark F1 in numerous countries worldwide, inter alia:

- Benelux device mark no. 732601 F1 FORMULA 1, with priority of July 11, 2003;

- Community device mark no. 3429396 F1 with priority of October 22, 2003; and

- International device mark registration no. 823226 F1 with priority of September 5, 2003;

- International device mark registration no. 845571 F1 with priority of July 13, 2004; and

- International word mark registration no. 732134 F1 with priority of December 20, 1999.

These trademarks shall jointly be referred to as the "F1 Trademarks".

Furthermore, Complainant or related companies own a number of domain names with the element F1, above all <f1.com>.

Respondent is holder of the Domain Name which was registered on November 6, 2008. Through its subsidiary Respondent distributes energy drinks.

5. Parties` Contentions

A. Complainant

Complainant claims that the F1 Trademarks are internationally very well-known if not famous. The F1 motor racing draws a large television audience in the world for an annual sporting event – with the race, broadcast live, attracting hundreds of millions of viewers in almost 200 countries. Each race attracts an average of approximately 50 million unique television viewers, with a race-only cumulative, annual audience of unique viewers of almost 600 million people.

The F1 Trademarks are used extensively to promote the event and are shown throughout the racing venue, on and off the track and in connection with the television broadcasting.

With reference to the F1 Marks, Complainant claims that particularly in the Benelux, Respondent`s residence, Complainant has extensive protection for F1 Trademarks.

Complainant is using its trademark F1 actively in licensing and sponsoring deals, allowing use of the famous mark on goods or services of third parties against compensation and under strict rules to safeguard the brands integrity.

With reference to the decision of the OHIM of May 11, 2007, in opposition case no. B894727, which was based on Community device trademark registration no. 631531 F1 and directed against a third party`s device mark F1 EASY OHIM found that the said Community trademark enjoys a high degree of reputation for all services it covers in class 41 in the European Union so that the mark F1 EASY would take unfair advantage of and be detrimental to the distinctive character of the opposition mark since both were dominated by the element "F1". Furthermore OHIM held that "F1" is a known abbreviation for Formula One races so the public will associate the marks with the races.

According to Complainant the F1 Trademarks are basically identical with the Domain Name. The only difference is that after element "F1" of the Domain Name, a purely descriptive and non-distinctive element "racingdrinks" is added. To combine the F1 Trademarks with the descriptor does not change the element "F1" at all. Quite to the contrary, it highlights the brand F1 standing alone and indicates that the website offers in some way drinks connected to Complainant`s activity and protected under the F1 Trademarks. Complaint refers to other cases under the Rules that it found to clearly held that such amendment of mark does not destroy identity of high similarity (Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin, WIPO Case No. D2003-0888; 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; Formula One Licensing B.V. v. Holding Theunisse., WIPO Case No. D2008-1631; Formula One Licensing B.V. v. Louis Theunisse., WIPO Case No. D2008-1633).

According to Complainant it is obvious that Respondent`s only reason in registering and using the Domain Name is to benefit from the reputation of the famous F1 Trademarks and to trade on the fame of the F1 Trademarks for commercial profit. With reference to Bayerische Motoren Werke AG v. Ivan Razin, WIPO Case No. D2005-0341, Complainant claims that such abuse of intellectual property right cannot constitute a bona fide offering of goods and services (see) and it is clear that Respondent has chosen the contested domain name simply to profit from its fame and generate initial expectation of users to whom they offer their goods.

Further, Complainant pointed out that the Domain Name has been registered by Respondent on November 6, 2008. This was after registration of the F1 Trademarks and long after the F1 Trademarks became famous.

According to Complainant there is no evidence that Respondent is or was commonly known by the trademark F1 RACINGDRINKS nor is there any evidence that Respondent is making legitimate commercial or non-commercial use of the Domain Name. Complainant never gave consent to such use and it is clear that Respondent must have known complainants trademark at the time of registering the domain name, as Respondent makes very aggressive reference to the F1 motor sport themes on the website itself.

Complainant further stated that for anybody who is just a little interested in the sport of motor racing, it is common knowledge that energy drink brands are important sponsors. The racing series organized under the F1 Trademarks, for example, lists one team RED BULL and another SCUDERIA TORRO ROSSO. One of the most prominent companies to have sponsored a team is Red Bull, the company owning the high energy drink of the same name, whose involvement as a sponsor began in 1995. Furthermore, a number of the teams and drivers have been sponsored by other companies which manufacture drinks at various times in the last 15 years. Moreover, since as early as 1980, champagne has featured in the prize giving ceremony at the end of each race. The victory celebration invariably involves the drivers drenching one another, the winning team boss and nearby crowd with spray from recently shaken bottles of champagne.

According to Complainant there can be no doubt that these facts were and are well-known to Respondent who makes clear reference to motor racing sport on the website. 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. As a consequence Respondent did not only misappropriate the F1 Trademarks, but in addition takes active steps to increase consumer confusion by playing the F1 motor sports sounds and pictures on the website.

In conclusion, Complainant quotes from Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556 and considers it well applicable to this case: "In this regard, it has been deemed by numerous WIPO panels that attracting Internet traffic and diverting it to website(s) selling products of complainant`s competitors by using a domain name identical or confusingly similar is evidence of bad faith under paragraph 4(b)(iv) of the Policy".

B. Respondent

Respondent manufactures, sells and distributes energy drinks under the name "F1 Racing energy drink" through a subsidiary. He acknowledges that F1 as element of the Domain Name attracts attention, as does every alphabetic letter and every cipher of its own, but asserts that concerning the aforementioned product name, the attention of the public at large will be attracted and the image/imagination will be most vivid by the element "Racing energy drink". When the public at large hears of the domain names <f1.nl> or <f1.com> it will probably think that it has to do with auto races. In contrast, no one shall think that Respondent`s aforementioned product has anything to do with (the company that organizes) Formula 1 auto races or that such product is produced, sold or distributed by Complainant or its affiliates companies.

Respondent further claims that proof of any confusion or misunderstanding by the buying public is lacking.

Moreover, Complainant`s web store does not sell energy drinks.

Respondent finds, when it considers the F1 Trademarks, that Complaint has monopolized thousands of things, but not energy drinks which cannot be considered non-alcoholic drinks because it is something special.

Respondent claims that it has right and legitimate interest in the Domain Name because it is a means to promote and market its energy drink.

In this connection Respondent pointed out that to it had not given enough attention to maintenance of the domain names <f1drinks.nl> and <f1energydrinks.com>¹. Respondent is sure that it would have preserved these domain names if it had put up a defense.

Respondent has furthermore brought forward that when assessing the three elements of paragraph 4(a) of the Policy (as the Panel understands), the Domain Name should be distinguished from the contents of the website under the Domain Name. If (the text of) the website under the Domain Name is possibly in conflict with third-party rights – which, according to Respondent, is not the case in this matter – this does not mean that the Domain Name affects the rights of others who are entitled to the Domain Name.

The images of a motor or a car on Respondent`s website only want to create the impression that energy drinks give strength, power and energy to the body. According to Respondent, its use of the Domain Name is therefore made in good faith.

Finally, Respondent is of the view that Red Bull is materially the claimant who has asked Complainant by means of procedures under the Policy to push Respondent off the market as a small competitor.

6. Discussion and Findings

Supplemental filing

On July 15, 2009, Complainant filed a Statement to Respondent`s response. The Panel observes that it must be mindful of the need for procedural efficiency, but that it has discretion to accept an unsolicited supplemental filing (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, question 4.2). The Panel believes that supplemental filings should ordinarily not be taken into account, except in exceptional circumstances. Those circumstances would include Complainant`s objective inability to anticipate and deal with arguments made in the Response (PAA Laboratories GmbH v. Printing Arts America, WIPO Case No. D2004-0338). It is also helpful if the party submitting its filing can show its relevance to the case and why it was unable to provide that information in the Complaint or Response.

In this case, Complainant did not explain the need to file a Statement to Respondent`s response. As Complainant was reasonably able to anticipate the Response, the Panel declines to take into account Complainant`s Statement to Respondent`s response.

According to paragraph 4(a) of the Policy, the requested remedy can be granted if Complainant asserts and proves each of the following:

A. that the Domain Name is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights; and

B. the Respondent has no rights or legitimate interests in respect of the Domain Name; and

C. the Domain Name has been registered and was being used in bad faith.

A. Identical or Confusingly Similar

First, the Panelist agrees with Respondent`s observation in conformity with the panelists` majority view that the contents of the website under the Domain Name do not play a role in the assessment of the question whether the Domain Name is identically or confusingly similar to the F1 Trademarks (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions). Therefore, the Domain Name as such is hereinafter compared with the F1 Trademarks, whereby the top level domain label ".com" – as being a necessary part of a domain name – is not taken into account.

The F1 Trademarks are reflected entirely in the Domain Name. In the Domain Name the term "racing drinks" is added to "F1". This term in itself has (little) distinctive character, but in combination with the F1 Trademarks of which the Panel is of the view that (just like the other "F1" trademarks, of which Complainant has submitted registration evidence) they are well-known, the Panel rules that "racing" and "F1" are conceptually similar, whereas the remaining word (a plural of "drink") for a drink is purely descriptive.

The term "racing drinks" therefore plays a subordinate role in the comparison between the F1 Trademarks and the Domain Name. In the opinion of the Panel the Domain Name is therefore similar to the Trademarks in such a way that as a result there may be a likelihood of confusion.

B. Rights or Legitimate Interests

Complainant submitted prima facie evidence that Respondent has no right to or a legitimate interest in the Domain Name. Respondent must therefore prove that it is entitled to the Domain Name or has a legitimate interest therein.

In this respect Respondent brought forward that it has a great interest in the Domain Name because it uses it to promote and market its energy drink product. In that connection the Panel is satisfied that Respondent does indeed appear (in part) to be using the domain name to promote an energy drink with the name "F1 Racing" or "F1 Racing Energy Drink" via its website, as stated by Respondent and confirmed by the screen prints submitted by Complainant as Exhibit 8. The website is clearly of a commercial nature, and the products promoted on it would appear to compete (at least in part) to those offered by Complainant under its well-known F1 Trademarks.

The Panel cannot rule out that Respondent`s product name infringes the F1 Trademarks and/or other trademarks of Complainant, but neither can it rule out that the product name is valid and non-infringing. Respondent submitted third-party (F1 Racing Establishment, Smart Drinks & Food and Infra metal Establishment GesmbH) trademark registrations for the word mark/device mark F1 RACING (International Registration no. 669526 and Community Trademark registration no. 451419) for, inter alia, non-alcoholic beverages, which trademarks were apparently placed on Respondent`s products, and various decisions in trademark oppositions, which may or may not be relevant to deciding that question. Respondent, however, did not provide any explanation at all with respect to said third party trademarks and decisions and has not, for instance, argued that on the basis of a license under said trademarks it was authorized to use the sign F1 RACING. The onus of making a case for rights or legitimate interests falls on Respondent. In the absence of a sound defense in this regard, it is not up to the Panel to form an opinion on this matter. The Panel has therefore no other option than to decide that Respondent failed to rebut Complainant`s prima facie evidence of lack of rights or legitimate interests.

Consequently, the Panel finds that Respondent has failed to demonstrate rights of legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

Regarding this third element the Panel agrees with the decision of the panel in Formula One Licensing B.V. v. Holding Theunisse., WIPO Case No. D2008-1631 and Formula One Licensing B.V. v. Louis Theunisse, WIPO Case No. D2008-1633, which cases were decided in default proceedings between Complainant and Respondent and Respondent`s managing director, respectively, regarding the domain names <f1energydrinks.com> and <f1drinks.com>.

The Panel finds that Respondent in the present case has registered and is using the Domain Name in bad faith.

The Panel finds it inconceivable that Respondent could not have been aware of Complainant and the F1 Trademarks, since the F1 Trademarks are well-known and were registered many years prior to the registration of the Domain Names. Moreover, Respondent`s website under the Domain Name refers to F1 motor racing by, amongst others, the representation of an F1 racing car, racing tracks, a checkered flag, various "F1" events and news about same. The question in this case turns on the issue of whether or not Respondent has a demonstrated right or legitimate interest in using Complainant`s well-known trademark for the purpose claimed, or if in so doing, Respondent was merely intending to trade and cash-in on its fame.

The Panel finds that, by using the Domain Name for a website where an "F1 energy drink" is promoted under reference to F1 motor racing, Respondent intentionally attempts to attract, for commercial gain, Internet users to its website or another online location, by creating a likelihood of confusion with 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, and has therefore registered and used the domain name in bad faith within the meaning of the third element of the Policy.

7. 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 name <f1racingdrinks.com> be transferred to Complainant.

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Alfred Meijboom
Sole Panelist

Dated: July 27, 2009