Formula One Licensing BV v Law Yi Chang

WIPO Case No. D2025-2126

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION
Formula One Licensing BV v. LAW YI CHANG

Case No. D2025-2126

1. The Parties

The Complainant is Formula One Licensing BV, Netherlands (Kingdom of the), represented by

Sheridans Solicitors LLP, United Kingdom.

The Respondent is LAW YI CHANG, Malaysia.

2. The Domain Names and Registrar

The disputed domain names <f1betau.com> and <f1betau.net> are registered with GoDaddy.com, LLC

(the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 29, 2025. connection with the disputed domain names. On May 30, 2025, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent (Registration Private, Domains By Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on June 2, 2025, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 5, 2025.

The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 6, 2025. In accordance with the Rules, paragraph 5, the due date for Response was July 26, 2025. The Respondent sent email communications to the Center on June 6, 2025, and July 19, 2025. On June 6, 2025, the Respondent consented to remedy, pursuant to which the Complainant requested to suspend the proceedings for the purpose of settlement negotiations on June 10, 2025. The Complainant requested to reinstitute the proceedings on July 8, 2025.

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On July 19, 2025 the Respondent sent an email communication to the Center stating: “Please be informed that I have been terminated from the company that was operating the websites associated with the disputed domain names. As of the date of my dismissal, I no longer have any access, control, or authority over the domain names or the associated websites. Therefore, I am unable to implement any domain transfer or take any steps to disable or suspend the websites, as I am no longer involved in their management in any capacity.” On July 25, 2025 the Center commenced the panel appointment process.

The Center appointed Nayiri Boghossian as the sole panelist in this matter on July 31, 2025. 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

The Complainant owns trademark registrations for the trademark F1 in numerous jurisdictions worldwide such as the following:

1.        International Trademark Registration No. 1398403, registered on November 17, 2017;

2.        United Kingdom Trademark Registration No. UK00903934387, registered on November 17, 2005.

The disputed domain names <f1betau.com> and <f1betau.net> were registered on February 23, 2024, and resolve to websites for online betting and gambling.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for transfer of the disputed domain names.

Notably, the Complainant contends that the disputed domain names are identical or confusingly similar to the Complainant’s trademark F1. The words “bet” and “au” are descriptive. “bet” is an abbreviation of betting and “au” is an abbreviation for Australia. These terms do not eliminate confusing similarity particularly that the Complainant’s trademark F1 is well-known as per prior UDRP decisions. The generic Top-Level- Domains “.com” and “.net” should be disregarded when assessing confusing similarity. Betting is common in relation to sporting and there has been an Australian Grand Prix for few decades.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain names. The Complainant did not authorize the Respondent to use its trademark. On the contrary, the Complainant put the Respondent on notice through its legal representative. The disputed domain names are not put into bona fide use. There is no connection between the Complainant and the Respondent. There is no legitimate noncommercial or fair use but a commercial venture for financial gain.

The Complainant contends that the disputed domain names were registered and are being used in bad faith. The Complainant’s trademark F1 is well-known. In past correspondence with the Complainant, the Respondent had confirmed that changes would be made but continued to use the Complainant’s trademark F1. The disputed domain names incorporate the Complainant’s trademark F1 and the websites to which they resolve, use the intellectual property rights of the Complainant without authorization. There is no disclaimer confirming the lack of association with the Complainant. The Respondent must have had knowledge of the Complainant’s trademark as it was registered before the creation of the disputed domain names.

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B. Respondent

The Respondent did not submit an official reply to the Complainant’s contentions. But in an email dated June 6, 2025, the Respondent expressed agreement to the transfer of the disputed domain names to the Complainant. In another email dated July 19, 2025, the Respondent stated that it has no control over the disputed domain names as it no longer worked for the company that was operating the disputed domain

names.

6. Discussion and Findings

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing
(or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison
between the Complainant’s trademark and the disputed domain names. WIPO Overview of WIPO Panel

Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The Panel finds the F1 mark is recognizable within the disputed domain names. Accordingly, the disputed domain names are confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized
that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task
of “proving a negative”, requiring information that is often primarily within the knowledge or control of the
respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or
legitimate interests, the burden of production on this element shifts to the respondent to come forward with
relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of
proof always remains on the complainant). If the respondent fails to come forward with such relevant
evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0,
section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain names such as those enumerated in the Policy or otherwise. Instead, upon notice of the dispute, the Respondent agreed to the transfer of the disputed domain names. The Panel infers from this communication that the Respondent does not have any rights or legitimate interests in the disputed domain names, and that the Respondent does not object to the transfer of the disputed domain names to the Complainant.

The Panel finds the second element of the Policy has been established.

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C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

In the present case, the Panel notes that the Respondent must have been aware of the Complainant’s trademark as the disputed domain names include the terms “bet” and “au”, which refer to the activities of the Complainant and the Complainant’s trademark was registered far before the creation of the disputed domain names.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

Panels have held that the use of a domain name for illegitimate activity here, claimed impersonation/passing
off constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds the

Respondent’s registration and use of the disputed domain names constitutes bad faith under the Policy.

The Panel finds that the Complainant has established the third element of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <f1betau.com> and <f1betau.net> be transferred to the Complainant.

/Nayiri Boghossian/
Nayiri Boghossian
Sole Panelist
Date: August 7, 2025