The Complainant is Ford Motor Company of Dearborn, Michigan, United States of America (“USA”), represented by Phillips Ryther & Winchester, United States of America.
The Respondent is Domain Administrator of Panama, Panama. 2. The Domain Name and Registrar
The disputed domain name (the “disputed domain name”) is registered with Media Elite Holdings Limited dba Register Matrix (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 8, 2019. On January 9, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 10, 2019, 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 January 15, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 4, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 6, 2019.
The Center appointed Clive Duncan Thorne as the sole panelist in this matter on February 14, 2019. 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, Ford Motor Company, founded in 1903, is a global automotive industry leader. It manufactures or distributes automobiles in 200 markets across the world and has approximately 260,000 employees and 100 plants worldwide.
According to the Complainant, the mark FORD is among the “best-known and highly-regarded trade marks in the world”. The Complainant has continuously used FORD in connection with automobiles and parts since 1895 in the USA and is now known in many places in the world.
This has been found to be so by various and numerous previous UDRP decisions referred to in the Complaint including a previous panel decision; Ford Motor Co. v. Ignat, BuyThisDomain (icq 745770),WIPO Case No. D2007-1326 where the Panel found that; “there is no doubt that the trade mark FORD is famous, and that consumers around the globe associate it with automobiles produced by the Complainant”. In its most recent survey Interbrand ranked Ford as the 35th most valuable global brand.
The Complainant has obtained numerous trade mark registrations in the USA and globally for the mark FORD and marks which incorporate FORD. Two US registrations for FORD are referred to as representative examples; No. 74530 registered on July 20, 1909 and No. 643185 registered on March 26,1957. Copies are exhibited to the Complaint.
New and certified used automobiles are sold through a network of Ford dealers who are authorized to trade under names that include FORD trade marks. Frequently they use names consisting of “Ford” together with the business, geographic or family name of the dealer. A Ford dealership in Springfield, Pennsylvania uses the name “Springfield Ford Lincoln “ and the domain name which was registered on December 1, 1999. At Exhibit F to the Complaint is a copy of the WhoIs record for that domain name registration.
According to the Complainant the Respondent registered the disputed domain name on March 30, 2002. A copy of the WhoIs record is exhibited as Exhibit A to the Complaint. This registration is dated long after the Complainant’s rights in FORD were established.
In the absence of a Response the Panel finds the above evidence adduced by the Complainant as true and proceeds to determine the Complaint on the basis of that evidence. 5. Parties’ Contentions A. Complainant
The Complainant contends:
1. The disputed domain name wholly incorporates the mark FORD together with the trading name of a Ford dealer in Springfield, Pennsylvania; “Springfield Ford“. This is confusingly similar to the mark FORD and “Springfield Ford“ in which the Complainant has rights.
2. The Respondent has no rights or legitimate interests in the disputed domain name , has not been authorized to use the mark FORD and has no connection or affiliation with Ford. It has not made any bona fide use of the disputed domain name.
3. On the evidence adduced the disputed domain name was registered and used by the Respondent in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
On the evidence of the Complainant’s trade mark rights referred to in section 4 above the Panel finds that the Complainant has registered rights in the mark FORD and unregistered rights arising from long use. There is no doubt that the mark FORD is well known globally.
The Panel also finds and is supported by the decisions of prior panels (including the recent decision in Ford Motor Company v. Whois Manager, WhoIs Privacy Management Service / Brian Tyrell, Tyrrell Chevrolet Company,WIPO Case No. D2018-1887 in which was found to be confusingly similar to FORD) referred to by the Complainant that the use of the mark FORD together with term “Springfield” by which the Complainant’s dealer is commonly known is confusingly similar to the mark FORD. This is particularly so when it is common practice for dealer names to combine the manufacturer’s mark with the dealer’s name or its geographic location.
Accordingly this Panel finds that the disputed domain name is confusingly similar to the trade mark FORD in which the Complainant has rights. B. Rights or Legitimate Interests
The Complainant’s evidence is that in 2018 the Respondent was using the disputed domain name to resolve to and appears originally to have used it to display a generic index to advertising links. In around 2010 the Respondent began using the domain name to display links specifically related to Ford and its automobiles. See for example, Exhibit I to the Complaint.
A Domain Tools report at Exhibit J setting out historic screenshot use of the disputed domain name shows that the Respondent appears to have used it to display advertising links specifically related to Ford automobiles.
In the Panel’s view this is clear evidence that the disputed domain name was not the subject of authorized use by the Respondent. This use was not legitimate and does not involve a bona fide offering of the Complainant’s goods.
The use of the domain name by the Respondent to display advertising targeted as shown in Exhibits I and K towards the Complainant’s trading activities which reflect the domain name’s “meaning as a trade mark” is not legitimate.
The subsequent use of the disputed domain name to redirect visitors to competitive manufacturers i.e., and is plainly not legitimate use as previous UDRP panels have also found. For example in Ford Motor Company v. Domain Admin, Whois Privacy Corp. / Maddisyn Fernandes, Fernandes Privacy Holdings,WIPO Case No. D2017-1199 where the Panel found that where the disputed domain name resolved both to dealers selling the Complainant’s cars and also to competitors did not constitute “a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name”.
On the Complainant’s evidence and in the absence of evidence from the Respondent the Panel finds the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Complainant submits that many factors demonstrate the Respondent’s bad faith including, given the international fame and strength of the mark FORD, the fact of registration by itself. This view appears to have been accepted in previous panel decisions cited by the Complainant. This Panel also finds that registration was made with knowledge of the Complainant’s prior and existing trade mark rights in FORD.
In this Panel’s view the use of the disputed domain name to resolve to websites advertising competitive automobile companies products is clear evidence of use in bad faith as is shown by Exhibits G, K, and S to the Complaint.
The Complainant also relies upon the evidence of the Respondent’s long history of cyber infringement and use of false names as shown, in particular, by the Domain Tools Report at Exhibit J.
The Panel therefore accepts the Complainant’s submission that any of these circumstances, whether alone or in combination are sufficient to justify a finding that the Respondent has acted in bad faith which it finds. 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.
Clive Duncan Thorne
Sole Panelist
Date: February 27, 2019
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