The Complainant is Ford Motor Company, United States of America (“United States”), represented by Phillips Ryther & Winchester, United States.
The Respondent is Registration Private, Domains By Proxy, LLC, United States / Sunita Kulkarni, Danox Apps LLP, India, represented internally. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 12, 2020. On November 13, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 16, 2020, 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 November 16, 2020, 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 November 19, 2020. 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 November 23, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 13, 2020. The Response was filed with the Center on December 1, 2020. The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on December 9, 2020. 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 was founded in 1903 and is a global automotive industry leader, with a revenue of USD 155.9 billion in 2019. The Complainant owns among others the following trademarks (Annexes D-G to the Complaint): - United States Registration No. 74,530 for the word mark FORD, registered on July 20, 1909, for automobile and their parts; - United States Registration No. 643,185 for the word mark FORD, registered on March 26, 1957, for passenger cars and trucks; - India Registration No. 1478917 for the word mark FORD, registered on November 22, 2008, in class 36; and - India Registration No. 2025824 for the word mark FORD, registered on April 9, 2012, in class 18. The disputed domain name was registered on September 5, 2019, and is being used in connection with a webpage entitled “Ford Super Deals” displaying an image of a Ford Endeavour SUV copied form the Complainant’s marketing material and inviting Internet users to “Enter your information and get a product expert to call you”, requesting users to fill with their name, number, email address, city, Ford model of interest, and where they heard about the Respondent. At the bottom of the webpage a disclaimer states in small font “Disclaimer: Any content mentioned on this website is for information purpose only and prices are subject to change without notice. This website is just for the purpose of basic information only and not to be considered as an official website. This is not a dealership or manufacturer facilitated promotion. We are not an official dealership of this brand and neither are we claiming to be the same. Any and all commercial transactions will be directly between you and the authorized dealership allocated by the manufacturer.” 5. Parties’ Contentions A. Complainant The Complainant asserts to manufacture or distribute automobiles in approximately 200 markets across six continents, with over 150,000 employees and over 100 plants worldwide, having used the worldwide famous FORD trademark since 1895 in connection with automobiles and automobile parts. For the year 2019, FORD ranked as the 35th most valuable brand in the world on Interbrand’s annual survey of the “100 Most Valuable Global Brands”. The Complainant further claims to have first sold vehicles in India in 1907 and first manufactured vehicles in India in 1926, presently with 541 sales and service outlets in 292 cities in that country as well as employing 14,000 people across its operations in India. In the website that resolves from the disputed domain name the Complainant argues that the it does not identify the operator of the website and rather suggests that the website operator is acting in concert with Ford’s official dealerships, in spite of the disclaimer made which states that “all commercial transactions will be directly between you and the authorized dealership allocated by the manufacturer”. Under the Complainant’s view the disputed domain name incorporates the Complainant’s FORD trademark and is thus confusingly similar therewith, with the addition of the geographical term “india” insufficient to avoid a finding of confusing similarity under the Policy. Regarding the absence of the Respondent’s rights or legitimate interests, the Complainant argues that: i. the Respondent is not authorized to use the FORD trademark in connection with the disputed domain name, nor is the Respondent authorized to display the Complainant’s copyrighted marketing materials; ii. there is no relationship, connection, or affiliation between the Respondent and the Complainant; iii. the Respondent is not known by the disputed domain name; iv. the use made of the disputed domain name does not establish legitimate rights given that the Respondent is impersonating the Complainant, since that the website available at the disputed domain name is not clearly distinctive from the Complainant’s official websites, prominently featuring a copyrighted image of a FORD automobile that Respondent copied from the Complainant’s marketing materials, further infringing the Complainant’s rights and further contributing to the false impression that the Respondent’s website is operated with the Complainant’s approval or support; v. the criteria for a bona fide offering of goods or services as established in Oki Data Americas, Inc. v. ASD, Inc, WIPO Case No. D2001-0903 are not met, given that the Respondent does not accurately disclose the lack of relationship with the Complainant; and vi. the website to which the disputed domain name resolves includes no information regarding the identity of the provider of the website, which further serves to perpetuate the false impression of a commercial relationship between the disputed domain name and the Complainant. As to the registration and use of the disputed domain name, the Complainant states that: i. the Respondent knew of the Complainant’s trademark when registering the disputed domain name, given the display of the Complainant’s trademarks and copyrighted promotional material at the webpage that resolves from the disputed domain name; ii. the Respondent’s website was designed to appear as if belonging to the Complainant or to an entity acting in concert with the Complainant or the Complainant’s dealers; and iii. the purpose of the Respondent’s registration of the disputed domain name was to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of its website. B. Respondent The Respondent claims to be a “Lead generation startup based in Mumbai”, specializing in generating leads for car dealership partners, acting in the best interest of the dealerships. It further offers the disputed domain name for USD 2,000. 6. Discussion and Findings Paragraph 4(a) of the Policy sets forth the following three requirements, which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and The Complainant must prove in this administrative proceeding that each of the aforementioned three elements is present in order to obtain the transfer of the disputed domain name. A. Identical or Confusingly Similar The Complainant has established rights over the FORD trademark. The disputed domain name incorporates the Complainant’s notorious trademark with the addition of the geographical term “india”, a hyphen, and the generic Top-Level Domain (“gTLD”) “.com”, none of which prevent a finding of confusing similarity under the Policy which, as recognized by past UDRP panels, involves a “comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name” (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7). For the reasons above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. Therefore, Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a nonexclusive list of circumstances that may indicate the Respondent’s rights or legitimate interests in the disputed domain name. These circumstances are: (i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or (ii) the Respondent (as individuals, businesses, or other organizations) has been commonly known by the disputed domain name, in spite of not having acquired trademark or service mark rights; or (iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Under the Policy, paragraph 4(a)(ii), the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in the disputed domain name. According to the evidence submitted, the Complainant has made a prime facie case against the Respondent that it has not been commonly known by the disputed domain name and is neither an authorized reseller of the Complainant’s cars nor is there any relationship, connection, or affiliation between the Respondent and the Complainant; and also, that Respondent not been authorized to use the FORD trademark in connection with the disputed domain name. Also according to the evidence submitted by the Complainant, the use made of the disputed domain name in connection with a webpage entitled “Ford Super Deals” displaying the Complainant’s logo and copyrighted promotional material in a prominent manner clearly suggest at least an affiliation with the Complainant, which in fact does not exist. Furthermore, the Panel finds the nature of the disputed domain name carries a risk of implied affiliation with the Complainant and supports a finding that the Respondent lacks rights or legitimate interests in the disputed domain name. See WIPO Overview 3.0, section 2.5.1. The Respondent has not rebutted the Complainant’s prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent’s claims to generate leads for authorized Ford dealerships does not rebut the Complainant’s prima facie case, noting, inter alia, the lack of relationship with the Complainant and lack of authorization to use the Complainant’s trademark and copyrighted materials. Furthermore, the disclaimer provided at the disputed domain name is not sufficiently clear to prevent a finding that the Respondent is unfairly passing itself off as related to the Complainant. In that regard, the disclaimer does not explain the lack of relationship with the Complainant, or counter the impression of a relationship with the Complainant caused by the use of Complainant’s trademark and copyrighted promotional materials. By not disclosing the lack of relationship with the Complainant, the Respondent does not meet the criteria for a bona fide offering of goods or services as established in Oki Data Americas, Inc. v. ASD, Inc, supra. Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name. The Complainant has met its burden under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Under paragraph 4(a)(iii) of the Policy, the Complainant must show that the Respondent registered and is using the disputed domain name in bad faith. The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in respect of a disputed domain name, where a respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location. In this case, both the registration and use of the disputed domain name in bad faith can be found pursuant to Policy, paragraph 4(b)(iv) in view of the reproduction of the famous FORD trademark, as well as the webpage resolving from the disputed domain name, together with the unauthorized reproduction of the Complainant’s official marketing materials and product images, which create a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement thereof. For the reasons above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain name. 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, Wilson Pinheiro Jabur
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Sole Panelist
Date: December 21, 2020
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