Complainant is Ford Motor Company (Ford), United States of America (“United States”), represented by Phillips Winchester Attorneys at Law, United States.
Respondent is Will Real, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 26, 2021. On January 27, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 28, 2021, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on February 3, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 23, 2021. Respondent did not submit any response. Accordingly, the Center notified the Parties of Respondent’s default on February 24, 2021. The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on April 7, 2021. 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 Complainant is a leading global automotive company headquartered in Michigan, United States. It is the proprietor of numerous trademark registrations in jurisdictions around the world, including the following: - United States Trademark No. 74,530 for FORD (word mark), registered on July 20, 1909 for goods in class 19; The disputed domain name was registered by Respondent on January 5, 2021. It resolves to a website featuring pay-per-click links. 5. Parties’ Contentions A. Complainant Complainant’s contentions may be summarized as follows: Under the first element, Complainant states that it was founded in 1903 in Dearborn, Michigan and is a global automotive industry leader. Complainant manufactures or distributes automobiles in approximately 200 markets across six continents with over 150,000 employees. FORD is among the best-known and highly regarded trademarks in the world. Complainant has continuously used FORD in connection with automobiles, parts and accessories since 1895 in the United States and is now known in many places around the world. In 2020, FORD rank as the 42nd most valuable brand in the Interbrand annual survey of the “100 Most Valuable Global Brands”. Ford automobiles are sold through a network of dealers who are authorized by Complainant to conduct business under names that include Ford trademarks. Dealers often use names comprised of FORD and the business or family name of the dealer, or a name indicative of the relevant geographic area. Ford of Murfreesboro is an authorized dealership in operation since 2011. It uses the domain name Under the second element, Respondent has no legitimate interests or rights in the disputed domain name. It is not known by the disputed domain name and has not been authorized by Complainant to use the FORD mark in any way, has no connection of affiliation with Complainant, and has never made any bona fide use of the disputed domain name. Use of the disputed domain name to a host website that consists merely of a list of random advertising subjects is not legitimate. There is no evidence of preparations to use the disputed domain name in connection with a bona fide offering of goods and services. The nature of the disputed domain name precludes use by others, since it is virtually identical to the business and domain name of Complainant’s authorized dealer. Under the third element, Complainant alleges that FORD falls within a select class of internationally strong marks that have become so famous that it is impossible for any respondent to claim that he was unaware of Complainant’s rights. Such awareness may also be inferred because the mark was registered prior to Respondent’s registration of the disputed domain name. Respondent’s registration of a misspelling of a unique business and domain name strongly suggests the disputed domain name was registered for purposes of intentional confusion. The well-known FORD trademark is being used to advertise unrelated goods and services which seeks to create an impression of association with Complainant. Internet users searching for Complainant’s products may end up at Respondent’s website. Complainant requests transfer of the disputed domain name. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the UDRP requires Complainant to make out all three of the following: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) Respondent has registered and is using the disputed domain name in bad faith. A. Identical or Confusingly Similar Complainant has provided evidence establishing that it has trademark rights in the FORD mark through registrations and long use in the United States and internationally. This Panel concurs with previous UDRP panels that the FORD mark is famous. See for example Ford Motor Company v. Ignat, BuyThisDomain (icq 745770),WIPO Case No. D2007-1326. Complainant thereby satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1. Section 1.7 of WIPO Overview 3.0 provides: “It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.” In comparing Complainant’s FORD mark with the disputed domain name, the Panel finds that the disputed domain name is confusingly similar with Complainant’s mark. The disputed domain name contains Complainant’s FORD mark in its entirety. Complainant’s trademark is readily recognizable within the disputed domain name. The addition of other terms, in this case “ofmurfreeboro”, does not prevent a finding of confusing similarity. See, for example, F. Hoffmann-LaRoche AG v. Macalve e-dominios S.A,WIPO Case No. D2006-0451. It is the well-established view of UDRP panels that the generic Top-Level Domain (“gTLD”) “.com” is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test (see WIPO Overview 3.0, section 1.11.1, and cases cited thereunder). Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following: (i) before any notice to it of the dispute, Respondent’s use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) Respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or (iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The circumstances stated in the Complaint, the Amended Complaint and evidence in support set forth in the annexes thereto indicate that, at the time that Respondent registered the disputed domain name, Respondent had no rights or legitimate interests in the disputed domain name. The nature of the disputed domain name, which comprises Complainant’s famous FORD mark with a misspelling of the business and domain name of an authorized Ford dealership, cannot constitute fair use because Respondent thereby effectively impersonates or suggests sponsorship or endorsement by the trademark owner. Such use does not establish rights or legitimate interests in the domain name. See, for example, Adobe Systems Incorporated v. Domain OZ,WIPO Case No. D2000-0057. The Panel therefore finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Pursuant to WIPO Overview 3.0, section 2.1, and cases thereunder, where Complainant makes out a prima facie case that Respondent lacks rights or legitimate interests, the burden of production on this element shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. Respondent, in failing to file a response, has not submitted any evidence or arguments demonstrating such rights or legitimate interests, nor has it rebutted any of Complainant’s contentions. There is no information available that would support a finding of a fair use of the disputed domain name. Considering the confusing similarity between Complainant’s famous FORD Mark and the disputed domain name, along with the fact that the disputed domain name resolves to a website offering pay-per-click links, there can be no finding of rights or legitimate interests in the disputed domain name. Such use cannot constitute fair use of Complainant’s trademark. Donald J. Trump v. Mediaking LLC d/b/a Mediaking Corporation and Aaftek Domain Corp.,WIPO Case No. D2010-1404. Accordingly, the Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of a disputed domain name in bad faith: (i) circumstances indicating that Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or (ii) Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or (iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location. Complainant’s rights in the FORD mark predate the registration of the disputed domain name by more than a century. It is not credible that Respondent was unaware of Complainant’s famous mark when he registered the disputed domain name. The Panel finds that the addition of a misspelling of the name of an authorized Ford dealer was a deliberate choice to appropriate Complainant’s mark and to mislead Internet users. Considering these circumstances, the Panel finds that such a registration supports an inference of bad faith. See WIPO Overview 3.0, section 3.1.4, describing the types of evidence that may support a finding of bad faith. Having established that the disputed domain name was registered in bad faith, the Panel next turns to the issue of whether Respondent has engaged in bad faith use of the disputed domain name. The Panel finds that Respondent has demonstrated bad faith use by establishing and operating a website at “www.fordofmurfreeboro.com” that features pay-per-click links. Such use is not legitimate noncommercial or fair use. Respondent is using the disputed domain name to attract Internet users to its website to generate pay-per-click advertising revenue, which is indicative of bad faith. See, for example, The Jennifer Lopez Foundation v. Jeremiah Tieman, Jennifer Lopez Net, Jennifer Lopez, Vaca Systems LLC,WIPO Case No. D2009-0057. Respondent has failed to file any response or provide any evidence of actual or contemplated good faith use. Considering the totality of the circumstances, the Panel finds that the disputed domain name was registered and used in bad faith. The Panel therefore finds that Complainant has established the third element under paragraph 4(a) 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 Ingrīda Kariņa-Bērziņa
- United States Trademark No. 643185 for FORD (word mark), registered on March 26, 1957 for goods in class 19, claiming a date of first use of February 15, 1895.
Sole Panelist
Date: April 21, 2021
Full & Egal Universal Law Academy