CPFilms Inc. v. Markus Herbig
Claim Number: FA0212000137673
PARTIES
Complainant
is CPFilms Inc., Martinsville, VA
(“Complainant”) represented by Paul D.
McGrady, of Ladas & Parry,
Digital Brands Practice. Respondent
is Markus Herbig, Wiesbaden, GERMANY
(“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <wwwformulaone.com>,
registered with Network Solutions, Inc.
PANEL
The
undersigned certifies that he has acted independently and impartially and, to
the best of his knowledge, has no known conflict in serving as Panelist in this
proceeding.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on December 20, 2002; the Forum received a hard copy of the
Complaint on December 23, 2002.
On
December 30, 2002, Network Solutions, Inc. confirmed by e-mail to the Forum
that the domain name <wwwformulaone.com>
is registered with Network Solutions, Inc. and that the Respondent is the
current registrant of the name. Network
Solutions, Inc. has verified that Respondent is bound by the Network Solutions,
Inc. registration agreement and has thereby agreed to resolve domain-name
disputes brought by third parties in accordance with ICANN’s Uniform Domain
Name Dispute Resolution Policy (the “Policy”).
On
December 30, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of January 20, 2003 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent via e-mail, post and fax, to all entities and
persons listed on Respondent’s registration as technical, administrative and
billing contacts, and to postmaster@wwwformulaone.com by e-mail.
An
informal Response was received on January 10, 2003.
Complainant’s
additional submission was received on January 15, 2003.
On January 29, 2003, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed the Honorable
Charles K. McCotter, Jr. (Ret.) as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
The
<wwwformulaone.com>
domain name is confusingly similar to Complainant's FORMULA ONE MARKS. Respondent has no rights or legitimate
interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
B.
Respondent
Respondent
argues that the <wwwformulaone.com> domain name is not confusingly
similar because the addition of “www” distinguishes the domain name from
Complainant’s mark. Respondent also
notes that FORMULA 1 or FORMULA ONE refers to the motorsport and “www” refers
to the Internet; and, therefore, Respondent’s website signifies the “Formula 1”
motorsport on the Internet. Respondent
argues that his German motorsport homepage does not conflict with Complainant’s
products. Respondent contends that the
term FORMULAONE is a generic term for the “motorsport Formula 1” and is in
widespread use by others.
C.
Additional Submissions
Complainant
contends the real issue is not whether third parties other than Respondent have
rights or legitimate interests in a domain name containing the element FORMULA
ONE. Rather, the real issue is whether
Respondent has rights or legitimate interests in a domain name containing the
elements “www” and FORMULAONE when such domain name is a mere “typo” of Complainant’s
domain name and common law service mark.
Respondent’s offer in his Response to sell the domain name to
Complainant for EU1,000 (about US$1,045) constitutes bad faith.
Complainant,
CPFilms, Inc., holds trademark registrations in Australia, Mexico and the
European Community for FORMULA ONE and has applied for a trademark in the
United States. Most of the
Complainant’s marks cover tinted, laminated and/or reflective plastic
automotive window film to be installed on automobiles, trucks and boats and
related services and marketing materials.
Complainant also is the registrant and user of the generic top-level
domain name <formulaone.com>.
Complainant provides the Formula One goods and services throughout the
United States and in Canada, and via the Internet. New car dealers frequently recommend the Formula One goods and
services. Complainant’s history under
its FORMULA ONE MARKS began in 1993.
Complainant’s FORMULA ONE MARKS have earned recognition, a good name,
and a reputation for high quality.
Respondent has
no trademark or other intellectual property rights to the domain.
Respondent does not use the element FORMULA
ONE in his name. Respondent’s
sole use of the domain name has been to divert Complainant’s customers to
another website F-1.info, a domain name owned by a third party and where car
racing tickets and travel packages, focusing primarily on the European
Community are sold.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (the “Rules”) instructs this 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.”
Paragraph
4(a) of the Policy requires that the Complainant must prove each of the following
three elements to obtain an order that a domain name should be cancelled or
transferred:
(1)
the domain name registered by the Respondent is identical or confusingly
similar to a trademark or service mark in which the Complainant has rights;
(2)
the Respondent has no rights or legitimate interests in respect of the domain
name; and
(3)
the domain name has been registered and is being used in bad faith.
Complainant has demonstrated its rights
in its FORMULA ONE mark through proof of trademark registrations in Australia,
Mexico and the European Community.
Respondent’s <wwwformulaone.com> domain name is confusingly
similar to Complainant’s mark because it incorporates Complainant’s entire mark
and merely adds the prefix “www.”
Respondent’s conduct of adding the prefix “www” is typosquatting because
the disputed domain name takes advantage of a common typographical error made
by Internet users when entering Complainant’s domain name. The addition of the “www” prefix does not
add any distinct characteristics capable of overcoming a claim of confusing
similarity. See Bank of Am. Corp. v. InterMos, FA 95092
(Nat. Arb. Forum Aug. 1, 2000) (finding that Respondent’s domain name
<wwwbankofamerica.com> is confusingly similar to Complainant’s registered
trademark BANK OF AMERICA because it “takes advantage of a typing error
(eliminating the period between the www and the domain name) that users
commonly make when searching on the Internet”); see also Victoria’s Secret v. Zuccarini, FA 95762
(Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding
letters to words, a Respondent does not create a distinct mark but nevertheless
renders the domain name confusingly similar to Complainant’s marks).
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Rights or Legitimate Interests
Complainant
argues that Respondent is not using the <wwwformulaone.com> domain
name in connection with a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy
¶ 4(c)(iii) because Respondent is using the domain name to divert Internet
users to <f-1.info>, a website selling car racing tickets and travel
packages. The use of Complainant’s mark
in order to divert Internet users to an unrelated website for Respondent’s
commercial gain does not give rise to rights or legitimate interests pursuant
to Policy ¶ 4(c)(i) or ¶ 4(c)(iii). See Vapor Blast Mfg. Co. v. R & S Tech.,
Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s
commercial use of the domain name to confuse and divert Internet traffic is not
a legitimate use of the domain name); see also Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9,
2000) (finding no legitimate use when Respondent was diverting consumers to its
own website by using Complainant’s trademarks); see also AltaVista v.
Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding that use of the domain
name to direct users to other, unconnected websites does not constitute a
legitimate interest in the domain name).
Furthermore,
Respondent’s offer to sell the domain name to Complainant for EU1000 suggests
lack of legitimate interest. See
Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s
conduct purporting to sell the domain name suggests it has no legitimate use); see
also Vapor Blast Mfg. Co. v. R&S Tech., Inc., supra (“Respondent’s
willingness to transfer the domain name to Complainant as reflected in its
Response is evidence that it has no rights or legitimate interests in the
domain name.”).
Respondent
is not commonly known by the FORMULA ONE mark or <wwwformulaone.com>. Respondent does not own any trademarks or
service marks. Respondent has no rights
or legitimate interests in the disputed domain name pursuant to Policy ¶
4(c)(ii). See Gallup Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known by the mark); see also
Compagnie de Saint Gobain v. Com-Union
Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate
interest where Respondent was not commonly known by the mark and never applied
for a license or permission from Complainant to use the trademarked name).
The
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Respondent is engaged in typosquatting
because <wwwformulaone.com> utilizes a common spelling error to
divert Internet traffic to <f-1.info>. This practice of “typosquatting”
has been recognized as a bad faith use of a domain name under the UDRP pursuant
to Policy ¶ 4(b)(iv). See e.g. AltaVista Co. v. Stoneybrook,
D2000-0886 (WIPO Oct. 26, 2000) (awarding <wwwalavista.com>, among other
misspellings of altavista.com, to Complainant); Dow Jones & Co. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1,
2000) (awarding domain names <wwwdowjones.com>, <wwwwsj.com>,
<wwwbarrons.com> and <wwwbarronsmag.com> to Complainants).
Furthermore, Respondent registered and used the domain name
<wwwformulaone.com> in bad faith with knowledge of Complainant’s
rights in the FORMULAONE mark. When
Respondent registered and began using the domain name, Respondent knew or
should have known that use of the domain name in this fashion would violate
Complainant’s trademark rights in the FORMULAONE mark. See Samsonite Corp. v. Colony
Holding, FA 94313 (Nat. Arb. Forum, April 17, 2000) (evidence of bad faith
includes actual or constructive knowledge of commonly known mark at the time of
registration).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
Having established all three elements
required under the ICANN Policy, the Panel concludes that the requested relief
shall be hereby granted.
Accordingly, it is Ordered that the
domain name <wwwformulaone.com> be
transferred from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated: February 7, 2003
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