The Complainant is Ford Motor Company of Dearborn, Michigan, United States of America (“United States”), represented by Phillips Ryther & Winchester of Salt Lake City, Utah, United States.
The Respondent is Customer 1242419831, Contact Privacy Inc. of Toronto, Ontario, Canada / Domain Privacy Service FBO Registrant, Big Tex Consulting of Burlington, Massachusetts, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with Google Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 24, 2018. On August 24, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 25, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 28, 2018, 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 amendment to the Complaint on August 30, 2018.
The Center verified that the Complaint together with the amendment to 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 August 31, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 20, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 26, 2018.
The Center appointed Nicolas Ulmer as the sole panelist in this matter on October 5, 2018. 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 is a large multinational automobile company founded in 1903. One of its luxury model automobiles is called “Lincoln”; according to the Complaint the Complainant has been manufacturing and selling Lincoln automobiles since 1922; in 1949 the Complainant registered the LINCOLN trademark in the United States (Registration trademark No. 511,662, with registration date June 28, 1949 and first use in commerce in 1920), and that registration is still active. An Annex to the Complaint reveals a number of other United States trademark registrations and pending registrations for LINCOLN and marks that include LINCOLN, and covering motor cars, vehicle accessories and other products.
One of Complainant’s LINCOLN brand automobiles is an SUV called the Lincoln Navigator. The Complainant first obtained a United States trademark for NAVIGATOR in connection with motor vehicles in 1997 (Registration trademark No. 2,111,095, with registration date November 4, 1997), and has subsequently registered several other United States trademarks for NAVIGATOR covering a variety of goods.
The disputed domain name was registered on March 20, 2018. The disputed domain name does not resolve to an active website. 5. Parties’ Contentions A. Complainant
The Complainant alleges that the disputed domain name is confusingly similar to its trademarks as it incorporates two of them (LICOLN and NAVIGATOR) in full, and thereby spells out the name of one of its most popular vehicle models. In addition the Complainant asserts that it is entirely unaware of any rights the Respondent has or could have in the disputed domain name.
The Complainant also asserts that its trademarks and vehicles are very well known and that there cannot be any serious doubt that the Respondent registered the disputed domain name is a bad faith effort to take some improper advantage of their notoriety. Nor, asserts the Complainant, does the Respondent’s failure actively to use the disputed domain name here diminish a finding of bad faith registration and use since, notably, no good faith use of the disputed domain name can here be envisaged.
The Complainant also points out that it twice sent cease and desist letters to the Respondent through its privacy proxy service, but received no reply.
The Complainant accordingly requests that the disputed domain name be transferred to it. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The disputed domain name wholly incorporates two of the Complainant’s registered trademarks, LINCOLN and NAVIGATOR, which, together, constitute the name of one of the Complainant’s well-known vehicles.
This is more than sufficient to establish identity or confusing similarity within the meaning of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant has made clear that it has never authorized the Respondent to use its trademarks in the disputed domain name or otherwise, and that there is nothing to suggest that the Respondent is known as “Lincoln Navigator”; nor is there any indication that the Respondent was using, or could, use, the disputed domain name in connection with a bona fide offering of goods and services. There is, moreover, no evidence or inference in the case file of this matter that in any way contradicts the Complainant’s clear assertions in this regard.
It is now well established in previous UDRP decisions that a complainant needs to establish at least a prima facie case that the respondent has no rights or legitimate interests in respect of the disputed domain name. See Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455. Where such a prima facie case is made, the burden shifts to the respondent to demonstrate its’ rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the Policy. See also, Meizu Technology Co., Ltd. v. “osama bin laden”,WIPO Case No. DCO2014-0002; and H & M Hennes & Mauritz AB v. Simon Maufe, Akinsaya Odunayo Emmanuel and Nelson Rivaldo,WIPO Case No. D2014-0225.
As the Complainant has here asserted at least such a prima facie case, and there is nothing in the case file that would rebut or contradict it, the Complainant has met its burden of proof under paragraph 4 (a) (ii) of the Policy. C. Registered and Used in Bad Faith
Two of the Complainant’s long-standing trademarks corresponding to the exact name of a very well-known and popular motor vehicle are set forth in the disputed name registered many years after each of the trademarks. It is entirely implausible that the disputed domain name was registered by serendipity, rather it can only have been done in bad faith.
Bad faith use is also evident here despite the Respondent’s “passive holding” of the disputed domain name. This bad faith use is evident from the totality of the circumstances here present: the distinctiveness and notoriety of the Complainant’s mark; the failure of Respondent to submit a Response or otherwise provide any evidence of contemplated good faith use; the Respondent’s concealing of its identity behind a proxy services; and the implausibility of any good faith use to which the disputed domain name could be put. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.3 (3rd Ed.); see also, “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. G, Inc.,WIPO Case No. D2017-0246.
It follows that the Complainant has met its burden under paragraph 4(a)(iii) 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 name be transferred to the Complainant.
Nicolas Ulmer
Sole Panelist
Date: October 16, 2018
Full & Egal Universal Law Academy