The Complainant is Ford Motor Company of Dearborn, Michigan, United States of America, represented by Phillips Ryther & Winchester, United States of America.
The Respondent is VistaPrint Technologies Ltd. / Domain Administrator of Bermuda, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 27, 2015. On October 28, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 28, 2015, the Registrar transmitted by email to the Center its verification response confirming that the 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 3, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 23, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 24, 2015.
The Center appointed David A.R. Williams, QC as the sole panelist in this matter on December 2, 2015. 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 manufactures and distributes automobiles in 200 markets across six continents. It is commonly known as "Ford Motor" or "Ford Motors". The Complainant's relevant trademarks are FORD, FORD MOTOR and FORD MOTOR COMPANY, which date back as early as 1909. These marks have been registered in the United States and worldwide. FORD was listed in Business Week's annual survey of the "100 Most Valuable Global Brands" as the 38th most valuable brand in the world in 2015.
On September 22, 2015, the Respondent registered the disputed domain name: . The Respondent was not authorized by the Complainant to register the disputed domain name .
The Complainant sent a cease and desist letter to the Respondent on September 29, 2015. The Complainant has received no response in relation to the cease and desist letter. The Respondent has not made contact with the Complainant. The Respondent has taken no part in this proceeding. 5. Parties' Contentions A. Complainant
In its Complaint, the Complainant makes three main contentions regarding the Respondent's registration of the disputed domain name :
i. That the domain name is confusingly similar to a trademark or service mark in which the Complainant has rights;..and
ii. That the Respondent has no rights or legitimate interests in respect of the domain name; and
iii. That the domain name was registered and is being used in bad faith.
As to the first contention, the Complainant submits that the disputed domain name wholly incorporates the world-famous FORD trademark. It submits that the use of the plural form of "motor" is insufficient for trade mark purposes or passing off purposes. In short, the disputed domain name is confusingly similar to the Complainant's mark.
As to the second contention, the Complainant submits that the Respondent is not known by the disputed domain name, has not been authorized by the Complainant to use its trademarks in any way, has no connection or affiliation with the Complainant, and has never made any bona fide use of the disputed domain name. This is because, the Complainant submits, the only use the Respondent has made of the disputed domain name is to host a website displaying an advertisement for VistaPrint – a business unrelated to the Complainant.
As to the third contention, the Complainant submits that bad faith is established. Given the Complainant's strength and fame, it is impossible for the Respondent to claim it was unaware of the Complainant's prior rights or claim it has a legitimate interest in a domain name that combines "Ford" with "motors". Moreover, the disputed domain name is completely unrelated to the goods and services advertised on the relevant website – there is no legitimate explanation for the Respondent's choice of domain name. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must show three elements to succeed in its claim:
i the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
ii. the Respondent has no rights or legitimate interests in respect of the domain name; and
ii. the domain name has been registered and is being used by the Respondent in bad faith. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy contains two parts. First, the Complainant must have rights to the relevant trademark or service mark. Secondly, the Respondent's domain name must be "identical or confusingly similar" to that trademark or the service mark.
The first consideration is whether the Complainant has rights to the trademarks FORD and FORD MOTOR COMPANY. The Complainant has registrations for both of these. The first was registered in the United States Patent Office (now, the United States Patent and Trademark Office), Reg. No. 74,530 in 1909, and the second in the Principal Register of the United States Patent and Trademark Office, Reg. No. 2,087,916, in 1997. The Panel is satisfied that the Complainant has rights to such trademarks.
The Respondent's domain name uses the Complainant's trademark followed by the suffix "motors". The Complainant's trademark and "motors" are not separated in the domain name.
Though the Respondent's domain name uses the plural form of "motor", the Panel agrees with the Complainant that it is an immediately recognizable variant of the "FORD MOTOR COMPANY" trademark and that it wholly incorporates the "FORD" trademark. Thus, while the trademarks and the disputed domain name are not identical, the Panel agrees with the Complainant that they are confusingly similar. For example, in Deutsche Telekom AG v. Vision Computer AL, WIPO Case No. D2001-1240, the panel held that adding a single letter "s" to the Complainant's trademark added no distinctive feature.
The Panel finds that the disputed domain name is confusingly similar to both the FORD and FORD MOTOR COMPANY trademarks. The first criterion has been met. B. Rights or Legitimate Interests
Without more, the registration of a domain name does not give rise to rights or legitimate interests in a domain name (see Gold Medal Travel Group Plc v. Damir Kruzicevic, WIPO Case No. D2007-1902). Paragraph 4(c) of the Policy clarifies the circumstances in which a Respondent may create rights or a legitimate interest in a domain name. None of these circumstances are established in this case before the Panel.
The Panel upholds the Complainant's submission that the only public use the Respondent has made of the disputed domain name is to host a website displaying an advertisement for "VistaPrint". The Panel accepts that the use of a domain name to host a website advertising goods or services completely unrelated to the Complainant is not use in connection with a bona fide offering of goods and services. By analogy with Apple Inc. v. Private Whois Service,WIPO Case No. D2011-0929, the Panel finds that the Respondent's use of the domain name is akin to attracting Internet users to a website by deception.
The Complainant also alleges that it did not authorize the use and registration of the disputed domain name. In addition, the Respondent was not in a business relationship with the Complainant, nor has it ever had any connection or affiliation with the Complainant. Therefore, there is no evidence that the Respondent was ever known by the disputed domain name. The relevant legal precedents establish that if the Respondent fails to submit a response, the Panel can accept the Complainant's allegations as true (see Talk City Inc. v. Michael Robertson,WIPO Case No. D2000-0009). The Respondent has not challenged the Complainant's allegations. As a result, the Complainant has shown a prima facie case that the Respondent does not have rights or a legitimate interest in the disputed domain name. The second criterion is met. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy is framed in both present and past tense. Therefore, there are two elements to 4(a)(iii): the registration of the disputed domain name must have been undertaken in bad faith and the Respondent must have been using the disputed domain name in bad faith (Telstra Corporation Limited v. Nuclear Marshmellows, WIPO Case No. D2000-0003).
The first consideration is whether the Respondent registered the domain name in bad faith. The Complainant contends that the famous nature of its trademark prevents the Respondent from claiming that it was unaware of the Complainant's rights. In Jupiters Limits v. Aaron Hall,WIPO Case No. D2000-0574, the well-known nature of the Complainant's name, coupled with the fact that the Respondent was located in the same mailing address as the Complainant's business, meant that it was "inevitable that the Respondent registered the domain name in full knowledge of the Complainant's rights and interests". Given the Complainant's long term use of its marks and its worldwide repute, the Panel accepts it would be near impossible to claim ignorance of the Ford brand. The Ford Motor Company was founded in 1903. It was recently listed as the 38th most valuable brand in the world. As a result, the Respondent was likely to have knowledge of the Complainant's trademark at the time of registration. This finding, coupled with the Respondent's lack of rights or legitimate interests in the disputed domain name, leads the Panel to conclude that the disputed domain name has been registered in bad faith (see Telstra Corporation Limited v. Nuclear Marshmellows, supra; Centurion v Bank of Punjab Limited v. West Coast Consulting, LLC, WIPO Case No. D2005-1319).
The second consideration is whether the Respondent is using the disputed domain name in bad faith. The Respondent does not have a connection with the Complainant's products or services. Since September 2015, the Respondent has continued to use the disputed domain name to display an advertisement for VistaPrint. The Respondent's conduct thus attracts for commercial gain Internet users to another "on-line location" by creating a likelihood of confusion between the Complainant's trademark and the Respondent's domain name. This conduct is clear evidence of bad faith (see Harvey Norman Retailing Pty Ltd v. Pty Ltd,WIPO Case No. D2000-0945).
In Educational Tertiary Service v. TOEFL, WIPO Case No. D2000-0044, the panel noted that if the respondent fails to provide a justification for its use of the trademark, the panel "may reasonably infer that the Respondent neither intended to make nor has made any legitimate use of Complainant's trademark." The Respondent has not offered an explanation as to why the disputed domain name was chosen. There is no apparent legitimate reason for the use of the disputed domain name. As a result, the inference may properly be drawn that the Respondent has used the disputed domain name for the purpose of capitalizing on the reputation of the Complainant.
The cumulative circumstances of the case lead the Panel to the conclusion that the Respondent has registered and used the domain name in bad faith. The third criterion is met. 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 name, , be transferred to the Complainant.
David A.R. Williams, QC
Sole Panelist
Date: December 11, 2015
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