The Complainant is Ford Motor Company, United States of America, represented by Phillips, Ryther & Winchester, United States of America.
The Respondent is RegC, Liz Schlumbrecht / Private Registration, 1&1 Internet Inc., United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with 1&1 IONOS Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 18, 2019. On July 19, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 23, 2019, 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 July 24, 2019, 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 July 27, 2019.
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 August 5, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 25, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 26, 2019.
The Center appointed Martin Schwimmer as the sole panelist in this matter on September 11, 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, the Ford Motor Company, owns the famous FORD trademark. Matt Bowers is a car dealer who operates a number of auto dealerships under names such as Matt Bowers Chevrolet and Matt Bowers Nissan. Shortly before the opening of Matt Bowers Ford by the Complainant’s authorized dealer, the Respondent registered the name . Respondent has used the name to display advertising links and has offered the name for sale for $15,000. 5. Parties’ Contentions A. Complainant
Complainant contends, in relevant part:
The Disputed Domain Name is confusingly similar to the FORD Trademark because the Disputed Domain Name wholly incorporates Complainant’s registered FORD mark, and is identical to “Matt Bowers Ford”, the business name Ford’s well-known authorized dealer uses. The convention of forming dealer names by combining the manufacturer’s mark with the dealer’s name is well-established among automobile manufacturers.
The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, the Respondent is not known by the Disputed Domain Name, has not been authorized by Ford to use the Ford Mark in any way, has no connection or affiliation with Ford, and has never made any bona fide use of the Disputed Domain Name.
Use of the Disputed Domain Name to display advertising links targeted toward the domain name’s meaning as a trademark, is not legitimate. There is no evidence of any person or entity using the name “Matt Bowers Ford” other than Ford’s authorized dealer, and such use would infringe and dilute Ford’s Mark.
The FORD Mark is so famous that it is impossible for any respondent to claim that he was unaware of Ford’s prior rights. Furthermore, the Respondent’s offer to sell the Disputed Domain Name for $15,000 is in excess of the Respondent’s out-of-pocket registration costs.
Use of a domain name comprised of an automotive company’s trademarks plus another name, demonstrates bad faith since it is clearly possible for Internet users to end up at the Respondent’s websites while searching for Complainant’s products and services. Ford Motor Co. v Host Master, Transure Enter. Ltd.,WIPO Case No. D2018-0446 (April 2018).
This Respondent was the losing respondent in two prior UDRP proceedings involving famous trademarks, namely, Thermo Fisher Scientific Inc. v. RegC / Steve Carney, Case no. 1793884 (NAF July 20, 2018) (), and State Farm Mut. Automo. Ins. Co. v. RegC / Troy Moser, Case No. 1840198 (NAF June 2, 2019) (>). B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the FORD Trademark.
The Disputed Domain Name is identical or confusingly similar to the FORD Trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., “mattbowersford”) because “[t]he applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.1.
The Disputed Domain Name contains the FORD Trademark in its entirety and simply adds the words “matt bowers”. As stated in WIPO Overview 3.0, section 1.7, “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”
Furthermore, the Complainant has established that “Matt Bowers Ford” is the name of an authorized Ford dealership. Additionally, Panelists have previously recognized the practice within the automotive industry of combining the manufacturer’s mark with the dealer’s name. See, e.g., Ford Motor Co. v. Host Master, Transure Enter. Ltd.,WIPO Case No. D2018-0446 (April 20, 2018) (); Fraternal Enters Ltd. P’ship v. DVLPMNT Mktg., Inc.,WIPO Case No. D2016-0442 (May 5, 2016) (); American Honda Motor Co., Inc. v. Barro,WIPO Case No. D2013-2097 (January 24. 2014) ().
Accordingly, the Panel finds that Complainant has proven the first element of the Policy. B. Rights or Legitimate Interests
Complainant has argued that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “[the] Respondent is not known by the Disputed Domain Name, has not been authorized by Ford to use the Ford Marks in any way, has no connection or affiliation with Ford, and has never made any bona fide use of the Disputed Domain Name”; using the Disputed Domain Name to display pay-per-click advertising that targets the domain name’s trademark is not bona fide or legitimate but instead is “a competing and infringing use.”
WIPO Overview 3.0, section 2.1, states: “While 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 often impossible 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. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
The Panel finds that Complainant has established its prima facie case and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has satisfied the second element of the Policy. C. Registered and Used in Bad Faith
The Panel agrees with the Complainant’s contention that the FORD trademark is so famous that it is impossible for any respondent to claim that he was unaware of Ford’s prior rights. Multiple Panels have agreed as such. See, e.g., Ford Motor Co. v. Jon Schwartz,WIPO Case No. D2018-1066 (July 12,2018).
Furthermore, the Complainant established that the ‘Matt Bowers’ name appears on multiple automotive dealerships such as “Matt Bowers Nissan,” and thus the Respondent was clearly anticipating that the name “Matt Bowers Ford’ would come into use. It is thus apparent that the Respondent targeted the Complainant.
The Panel further notes that, the disputed domain name is also used in bad faith since there are pay-per-click links mainly referring to the Complainant and the automotive industry (including competitors of the Complainant) in the relevant website, and the Respondent is therefore knowingly taking advantage of user confusion.
Also, he Panel notes that this Respondent appears to have lost two previous UDRP proceedings, Thermo Fisher Scientific Inc. v. RegC / Steve Carney, Case no. 1793884 (NAF July 20, 2018) (), and State Farm Mut. Automo. Ins. Co. v. RegC / Troy Moser, Case No. 1840198 (NAF June 2, 2019) (). The Panel cannot make this finding with certitude due to the false contact information given by the Respondent (and, seemingly, in the two other proceedings). However, that the contact information here is false is additional evidence of bad faith in this proceeding.
Finally, the Respondent openly offered to sell the Domain Name for $15,000, well in excess of the Respondent’s possible out-of-pocket registrations costs.
The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been satisfied. 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.
Martin Schwimmer
Sole Panelist
Date: September 12, 2019
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