Fédération Internationale de l'Automobile v. Mark Gemmell / Excellent Dudes Ltd
Claim Number: FA2202001983373
Complainant is Fédération Internationale de l'Automobile (“Complainant”), represented by Robert White of Lexsynergy Limited, United Kingdom. Respondent is Mark Gemmell / Excellent Dudes Ltd (“Respondent”), Spain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fiaelectricgt.com>, registered with GoDaddy.com, LLC.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 7, 2022; the Forum received payment on February 7, 2022.
On February 8, 2022, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <fiaelectricgt.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 9, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 1, 2022 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@fiaelectricgt.com. Also on February 9, 2022, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no timely response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default. Respondent did however send an email to the Forum, followed by a tardy response, see below.
Complainant submitted an unsolicited reply to Panel will consider that as an Additional Submission, see below.
On March 7, 2022 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant states that it was founded in 1904 and is a non-profit association that is responsible for the development of motor sport worldwide. It is the governing body of motor sport worldwide and promotes safe, sustainable and accessible mobility for all road users across the world. It administers the rules and regulations for all international four-wheel motor sport including the FIA Formula One World Championship, FIA World Rally Championship, FIA World Endurance Championship, FIA World Touring Car Championship and FIA World Rally-Raid Championship. Complainant brings together over than 237 national motoring and sporting organisations from 142 countries on five continents. Its member clubs represent millions of motorists and their families. Through its national member clubs Complainant is involved in every level of motor sport and its remit extends to the millions of amateurs and professionals who enjoy motor sport in all of its variety. Complainant asserts rights in the FIA mark based upon its registration in the European Union in 2008.
Complainant alleges that the disputed domain name is confusingly similar to its FIA mark because it contains the mark in its entirety, merely adding the generic/descriptive terms “electric” and “gt” (which is an acronym that is widely used to denote high performance cars), as well as the generic top-level domain (“gTLD”) “.com”.
According to Complainant, Respondent does not have rights or legitimate interests in the disputed domain name. Respondent is not licensed or authorized to use Complainant’s FIA mark and is not commonly known by the disputed domain name. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the disputed domain name resolves to a parked page displaying pay-per-click hyperlinks. The domain name registration lapsed in August 2019 and it remained unregistered for over 12 months. It was registered by Respondent on 17 December 2020, one day after Complainant made a public announcement concerning its new FIA Electric GT motorsport competition. Complainant presumes that the main reason for the Respondent’s opportunistic registration of the disputed domain name is to force Complainant into commercial negotiations with Respondent and potentially to gain from it financially at a later stage by ransoming it back to Complainant.
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. The resolving website hosts advertising click-through links for third-party websites. Respondent had actual knowledge of Complainant and its rights in the FIA mark and admitted so in its response to Complainant’s cease-and-desist letter.
B. Respondent
Respondent failed to submit a timely Response in this proceeding. Respondent did however send an email to the Forum, stating, in pertinent part: “I'm sorry I haven't responded sooner. I don't check this email often and the physical letter just reached me yesterday … . I will prepare a more complete response with supporting documentation shortly however the situation comes down to the fact that the domain contains our EU registered trademark "ELECTRIC GT" as well as the plaintiffs trademark. We are not using the domain and have no intention of doing so without their permission, but for the same reason the FIA cannot use it without our permission either. We both have the same rights to own the domain however we have registered it long before the FIA had any interest in it. We first registered this domain in 2016 at the same time as we registered our trademark.”
In its tardy Response, Respondent states that it started a company called Electric GT in 2015 with the intention of establishing a world championship for electric production cars. Its website at <electricgt.co> reflects its intensive work in this respect. As all international racing is controlled by the FIA it registered the mark ELECTRIC GT in the European Union in 2016 and at the same time registered the disputed domain name in order to keep it safe for the future should Respondent be fortunate enough to obtain FIA approval and raise enough investment to start the championship. Discussions with FIA did not result in an agreement, and FIA decided to create an event using Respondent’s mark. The disputed domain name contains Complainant’s mark FIA and Respondent’s mark ELECTRIC GT, meaning that, in order to use the disputed domain name, approval would be required from both parties. Respondent has not used the disputed domain name nor does it intend to do so without consent from the FIA. Respondent has acted in good faith at all times with the FIA.
The tardy Response is signed “Mark Gemmell, CEO, Electric GT holdings Inc.”
C. Additional submissions
In its Additional Submission, Complainant requests that Respondent’s Response be disregarded for not having been filed within the deadline and in the correct format.
If the Response is considered by the Panel, Complainant draws the Panel’s attention to the fact the Respondent admits it was aware of the Complainant and deliberately targeted it through the registration and use of the disputed domain name. Respondent only has a registration for the figurative and highly stylised version of the mark ELECTRIC GT and does not own and indeed cannot own exclusive rights to the words “electric” and “gt” on their own.
Complainant argues that Respondent’s Response simply corroborates Complainant’s original contention that Respondent’s underlying purpose was to use the Domain Name as a “pawn” to shoehorn the Complainant into entering commercial negotiations with it, which is evidence of bad faith.
In its second email to the Forum, Respondent states, in pertinent part: “The grounds for ownership of the domain is our trademark. We registered the domain in 2015 with that purpose in mind.”
Complainant has rights in the mark FIA dating back to at least 2008 and uses it to develop motor sports.
Mr Mark Gemmell registered the disputed domain name in 2015 and the mark ELECTRIC GT in 2016. The domain name registration lapsed in August 2019 and it remained unregistered for over 12 months. It was registered by Respondent on 17 December 2020, one day after Complainant made a public announcement concerning its new FIA Electric GT motorsport competition.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The disputed domain name resolves to a parked page displaying pay-per-click hyperlinks.
Paragraph 15(a) of 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."
Before considering the three substantive elements of the Policy, the Panel must first rule on a procedural issue, namely the fact that the Response was tardy. Paragraph 10(b) of the Rules provides that, in all cases, the Panel shall ensure that the parties are treated with equality and that each Party is given a fair opportunity to present its case. Here, Respondent submitted a timely email stating that it would submit a Response. Thus the Panel decides to admit the tardy Response. The Panel decides also to admit Complainant’s Additional Submission and Respondent’s second email. See Victoria’s Secret Stores Brand Mgmt., Inc. v. LaFond, FA 1362225 (Forum Jan. 7, 2011) (deciding that while the response was deficient, “the Panel has nonetheless decided to consider the deficient Response.”); see also American Eagle Outfitters, Inc. and Retail Royalty Company v. Covanta Corporation, FA0504000465210 (Forum June 3, 2005) (“In its discretion, the Panel will consider the [untimely] Response as well as Complainant’s Reply.”),
Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
The disputed domain name contains Complainant’s FIA mark in its entirety, merely adding the generic/descriptive terms “electric” and “gt” (a widely used acronym used for performance cars), as well as the gTLD “.com”. Alternatively, the disputed domain name consists of a combination of two marks: FIA and ELECTRIC GT. The addition of generic or descriptive terms and a gTLD, or combining two marks, does not differentiate a disputed domain name from a mark for the purposes of Policy ¶ 4(a)(i). See Empowered Medical Solutions, Inc. d/b/a QRS-Direct and QRS Magnovit AG v. NULL NULL / QUANTRON RESONANCE SYSTEMS / JIM ANDERSON / HTR / unknown HTR / HTR, FA 1784937 (Forum June 8, 2018) (“Adding or removing descriptive terms or a gTLD is insufficient to differentiate a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i).”); see also Ant Small and Micro Financial Services Group Co., Ltd. v. Ant Fin, FA 1759326 (Forum Jan. 2, 2018) (“Respondent’s <antfinancial-investorrelations.com> Domain Name is confusingly similar to Complainant’s ANT FINANCIAL mark. It incorporates the mark entirely. It adds a hyphen, the descriptive terms “investor relations,” and the “.com” gTLD, but these additions are insufficient to distinguish the Domain name from complainant’s mark for the purposes of Policy ¶ 4(a)(i).”); see also G.D. Searle v. Martin Mktg., FA 118277 (Forum Oct. 1, 2002) (“Complainant has the right to protect its trademark whether standing alone, or included in a string of industry-related marks. Respondent’s inclusion of other drug-related marks [in the <viagra-xenical-celebrex-propecia-meridia-zyban.com> domain name] only increases the likelihood that confusion will result from use of the domain name.”). Thus the Panel finds that the <fiaelectricgt.com> domain name is confusingly similar to Complainant’s FIA mark under Policy ¶ 4(a)(i).
Where a complainant fails to establish it has standing to bring a claim regarding an included third party mark, a panel may decline to transfer the disputed domain name. Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.” See Dell Inc. v. Ionel Adrian Nicolae, FA 1683104 (Forum Aug. 22, 2016) (“Nvidia Corp. has not been joined as a Complainant in this matter and there is no nexus available through which Complainant can claim to have rights to the transfer of the <alienware-nvidia.xyz> domain name. Therefore, the Panel dismisses the Complaint because Complainant has failed to establish rights in or to the NVIDIA mark per Policy ¶ 4(a)(i).”).
Here, the ELECTRIC GT mark belongs to Respondent. Thus, the Panel could dismiss the Complaint because Complainant has failed to establish rights in or to the ELECTRIC GT mark per Policy ¶ 4(a)(i). However, the mark was granted for a highly figurative mark and it is not clear that Respondent can assert exclusive rights to the term “electric GT” which is an obvious designation of an electric high performance car.
Disputes regarding the use of trademarks are outside the scope of the present proceedings and are best resolved in national courts. See Abbott Labs. v. Patel, FA 740337 (Forum Aug. 15, 2006) (holding that assertions of trademark infringement are “entirely misplaced and totally inappropriate for resolution” in a domain name dispute proceeding because the UDRP Policy applies only to abusive cybersquatting and nothing else).
The Panel may choose to cancel rather than transfer the disputed domain name if it finds Complainant to have established the remaining elements of the Policy. See Blue Diamond Growers v. L Wood, FA 1728775 (Forum Jun. 7, 2017) (choosing to cancel the <bluediamondkings.us> domain name rather than transfer it, because the complainant did not have rights to the third-party KINGS mark, or consent from the mark holder to proceed); see also Bayerische Motoren Werke AG v. Gary Portillo, D2012-1937 (WIPO Nov. 29, 2012) (transferring the <rockvillebmwmini.com> and <rockvillebmw.com> domain names, but cancelling the <rockvilleaudibmw.com> domain name because it included the third-party AUDI mark).
As discussed below, the Panel finds that Complainant has established the remaining elements of the Policy. Further, given the specific facts of the present case, and its analysis of the third element of the Policy, the Panel will order transfer of the disputed domain name, without prejudice to any rights that might be asserted by Respondent with regards to use of its mark ELECTRIC GT.
Complainant has not licensed or otherwise authorized Respondent to use its mark. Respondent is not commonly known by the disputed domain name: WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Here, the WHOIS information for the disputed domain name lists the registrant as “Mark Gemmel / Excellent Dudes Ltd.” Therefore the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
The disputed domain name resolves to a parked page with pay-per-click hyperlinks. Use of a domain name to redirect users to unrelated third-party sites (whether or not they compete with Complainant) is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant); see also Coachella Music Festival, LLC v. josh greenly / All Access Tickets, FA1507001629217 (Forum Aug. 10, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name as required under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), where the respondent was using the disputed domain name to host a web page that featured links to services that competed with those of the complainant). Thus, the Panel finds that Respondent fails to use the disputed domain name to make a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). And, for the reasons given above and below, the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.
Respondent alleges that it registered the disputed domain name in good faith, in order to have it available for its business promoting an electric car competition that would be authorized by Complainant. While the original registration in 2016 may have been made for this purpose, it was made by an entity (Electric GT) that is not the same as the entity that registered the disputed domain name in 2020, one day after Complainant announced its plans to hold a competition for electric cars. Further, Electric GT has developed and used the web site <electricgt.co> to promote its business. If Respondent is Electric GT (which is not established: the fact that both Electric GT and Excellent Dudes are represented by Mr Mark Gemmel does not establish that they are the same entity), it is not clear why it would need to register the disputed domain name after it had lapsed, given that it is already promoting its business under a different domain name. On the basis of the specific facts of the present case, the Panel finds that Respondent did not have a legitimate goal in mind when registering the disputed domain name.
Indeed, as already noted – and contrary to Respondent’s allegation that it does not use the disputed domain name – Respondent uses the disputed domain name’s resolving webpage to host click-through links for third-party websites. This is evidence of bad faith registration and use under the Policy. See Bank of Am. Fork v. Shen, FA 699645 (Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites); see also PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (finding disruption of a complainant’s business which was not directly commercial competitive behavior was nonetheless sufficient to establish bad faith registration and use per Policy ¶ 4(b)(iii)); see also Dovetail Ventures, LLC v. Klayton Thorpe, FA1506001625786 (Forum Aug. 2, 2015) (holding that the respondent had acted in bad faith under Policy ¶ 4(b)(iv), where it used the disputed domain name to host a variety of hyperlinks, unrelated to the complainant’s business, through which the respondent presumably commercially gained). Thus, the Panel finds bad faith registration and use under Policy ¶¶ 4(b)(iii) and/or (iv).
Further, Respondent admits that it registered the disputed domain name with actual knowledge of Complainant’s mark. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain name and that this constitutes bad faith under Policy ¶ 4(a)(iii).
The above findings are without prejudice to any rights that might be asserted by Respondent with regards to use of its mark ELECTRIC GT: as already noted, such matters are outside the scope of the present proceedings and are best resolved in national courts.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <fiaelectricgt.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: March 8, 2022
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