Complainant is Ford Motor Company, United States of America (“United States”), and Plan Ovalo S.A., Argentina (collectively “Complainant”), represented by Marval O´Farrell & Mairal, Argentina.
Respondent is New Ventures Services, Corp, New Ventures Services, Corp, 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 February 18, 2021. On February 19, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name, followed by a formal reminder on February 25, 2021. On February 26, 2021, 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 Complainant on March 2, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on March 2, 2021. 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 Respondent of the Complaint, and the proceedings commenced on March 10, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 30, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 7, 2021. The Center appointed Scott R. Austin as the sole panelist in this matter on April 9, 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 Ford Motor Company is a global automotive and mobility company, engaged in designing, manufacturing, marketing, and servicing a full line of cars, trucks, and sport utility vehicles under the trademark FORD (the “FORD Mark”) as well as providing financial and “smart mobility” services. It was also the first automaker to settle in Argentina, building an assembly plant in Buenos Aires in 1913 and has had a steady presence in Argentina for over 100 years. Complainant Plan Ovalo S.A. is a company affiliated with Complainant Ford Motor Company established in Argentina over 40 years ago that offers financing plans for the purchase of FORD vehicles in Argentina under the trademark PLAN OVALO, in use by Complainant since as early as 1977 (the “PLAN OVALO Mark”). Complainant Ford Motor Company has secured ownership of over 160 trademark registrations in Argentina, including the following for the PLAN OVALO Mark which is registered in the name of Complainant Plan Ovalo, S.A.: - Argentina Trademark Registration No. 2646605, PLAN OVALO, registered on April 29, 2014 for a range of financial services in class 36. Complainant Ford Motor Company’s wholly owned subsidiary Ford Argentina S.C.A., which is the owner of the official Argentine domain name The disputed domain name was registered on September 1, 2020. At the time of filing the Complaint, the disputed domain name resolved to an inactive web page displaying the message “503 Service Unavailable”. At the time of the decision, it resolves to a web page displaying Pay-Per-Click (“PPC”) links. 5. Parties’ Contentions A. Complainant Complainant contends that the disputed domain name is identical or confusingly similar to Complainant’s trademark; that Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings 6.1. Procedural Issue The corporate records submitted offer sufficient evidence of the affiliation for the Panel to infer that consolidation of the two entities identified as Complainant is proper under the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 4.11.1 and 1.4.2; see also Volkswagen Group of America, Inc. v. Kim Hyeonsuk a.k.a. Kim H. Suk, Domain Bar, Young N. and Kang M.N,WIPO Case No. D2014-1596. 6.2. Substantive Issues To succeed, Complainant must demonstrate that all the elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) 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. The standard of proof under the Policy is often expressed as the “balance of the probabilities” or “preponderance of the evidence” standard. Under this standard, an asserting party needs to establish that it is more likely than not that the claimed fact is true. See, WIPO Overview 3.0, section 4.2. A. Identical or Confusingly Similar Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has demonstrated its rights because it has shown that Complainant Plan Ovalo S.A. is the holder of multiple valid and subsisting trademark registrations for the PLAN OVALO Mark. See Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen,WIPO Case No. D2014-0657. Prior UDRP panels have held “the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks”. Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. The disputed domain name incorporates Complainants’ PLAN OVALO Mark, inverting the two terms which comprise the PLAN OVALO Mark, namely “plan” and “ovalo”, both of which remain fully recognizable within the disputed domain name, and deletes the space between the two terms comprising the mark. This inversion and deletion of a single space between the terms comprising the PLAN OVALO Mark does not significantly affect the appearance or pronunciation of the disputed domain name. The disputed domain name, therefore, remains substantially similar to Complainant’s registered PLAN OVALO Mark as well as its official Argentine domain name Prior UDRP panels have found reversing the order of the dominant terms and deletion of a space within a complainant’s trademark to be insufficient to prevent a finding of confusing similarity between the disputed domain name and the complainant’s trademark. See Société Nouvelle del Arte v. DataUpper Software,WIPO Case No. D2016-1840 (“the difference between Complainant’s mark and the disputed domain name is that in the latter the terms “pizza” and “del arte” are inverted, the spaces between those terms are omitted, and the Top-Level Domain “.com” is added. In the Panel’s opinion, these differences are minor, and inapt to distinguish the disputed domain name from Complainant’s mark.”); see also Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Corril Holding N.V.,WIPO Case No. D2005-1342 (inverted order of complainant’s trademark terms in domain names at issue does not render them dissimilar to mark); and, Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Private Whois Escrow Domains Private Limited / Pluto Domain Services Private Limited,WIPO Case No. D2008-1909. The Panel finds that the omission of a space between the two terms comprising Complainant’s mark is inadequate to prevent a finding of confusing similarity, as a space is an inadmissible character in domain names. See CCS Media Limited and CCS Media Holdings Limited v. VistaPrint Technologies Ltd,WIPO Case No. D2015-1888. See also Société Nouvelle del Arte v. DataUpper Software, supra. Finally, the addition of the Top-Level Domain (“TLD”) “.com” has been held irrelevant in determining whether the disputed domain name is confusingly similar. See Research in Motion Limited v Thamer Ahmed Alfarshooti,WIPO Case No. D2012-1146; WIPO Overview 3.0, section 1.11. Complainant’s PLAN OVALO Mark is readily recognizable as it is incorporated in its entirety albeit inverted into the disputed domain name and for that reason the Panel finds the disputed domain name confusingly similar to the PLAN OVALO Mark in which Complainant has rights. Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Under the second element of the Policy, a complainant is first required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. If a complainant makes that showing, the burden of production on this element shifts to the respondent to come forward with relevant evidence of such rights or legitimate interests in the domain name. If the respondent fails to come forward with such evidence, a complainant is generally deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. See also, Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Respondent is in default and thus has not attempted to come forward to show any rights or legitimate interests in the disputed domain name under the Policy at paragraph 4(c). Complainant has established, prima facie, that Respondent lacks rights or legitimate interests in the disputed domain name. First, Complainant asserts Respondent is not a licensee of or affiliated with Complainant, nor has Complainant consented to or granted any authorization for Respondent to make use of Complainant's PLAN OVALO Mark in a domain name or otherwise, noting that even use of the domain name It is generally regarded as prima facie evidence of no rights or legitimate interests if a complainant shows that the disputed domain name is identical or confusingly similar to a complainant’s trademark, that the respondent is not commonly known by the disputed domain name, and that a complainant has not authorized the respondent to use its mark (or an expression which is confusingly similar to its mark), whether in the disputed domain name or otherwise. See, Roust Trading Limited v. AMG LLC,WIPO Case No. D2007-1857. Respondent’s use of the disputed domain name to resolve to an inactive web page displaying the message “503 Service Unavailable”, or to a web page displaying PPC links, does not represent a bona fide use of the disputed domain name. See WIPO Overview 3.0, section 3.3 . Furthermore, prior UDRP panels have held that domain names that are identical to a complainant’s trademark carry a high risk of implied affiliation, and that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. See WIPO Overview 3.0, section 2.5.1. In this case, the Panel finds that although the terms are inverted in order, they are identical to each of the constituent terms of Complainant’s PLAN OVALO Mark and could be easily overlooked (or possibly considered by consumers as a “typo”). The disputed domain name, therefore, carries the risk of implied affiliation and cannot constitute fair use. In view of the above, the Panel finds that Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not submitted any argument or evidence to rebut Complainant’s prima facie case. The Panel determines, therefore, that Respondent does not have rights or legitimate interests in the disputed domain name and that Complainant has successfully met its burden under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Complainant contends that because Complainant has been operating in Argentina for over 40 years and its PLAN OVALO Mark has been in use by Complainant or its licensed subsidiaries since 1977, it is implausible to believe that Respondent did not have actual knowledge of Complainant’s mark when it registered a domain name confusingly similar to Complainant’s PLAN OVALO Mark, as well as its official Argentine domain name The Panel also notes here additional factors under section 3.1.4 and its cases from which the Panel may infer bad faith registration: (i) the strong reputation of Complainant’s well-known PLAN OVALO Mark in Argentina and the famous FORD Mark to which its automotive financing services relate, based on their widespread and international use, (ii) Respondent’s use of the identical constituent terms found in Complainant’s PLAN OVALO Mark, in reverse order to confuse consumers into an implied affiliation, (iii) Complainant’s official PLAN OVALO Website for Complainant’s FORD automobile financing services in Argentina is accessed at “www.planovalo.com.ar”, a strikingly similar string, which suggests Respondent targeted Complainant’s mark when it picked the disputed domain name, the only difference being a reversal of the identical terms and the addition of the country code “.ar”, (iv) Respondent’s failure to provide evidence whatsoever of any actual or contemplated good faith use of the domain name, and (v) the default of Respondent’s reply to Complainant’s contentions. Given the circumstances of this case, such a showing is sufficient to establish bad faith registration. See WIPO Overview 3.0, section 3.2.1. Bad faith use is also established by the record. Complainant has shown that the disputed domain name resolved to a web page showing the message “503 Service Unavailable”, as set forth in an Annex to the Complaint. Prior UDRP panels in the presence of the bad faith factors listed in the prior paragraph have held such passive holding of the disputed domain name satisfies the requirement of paragraph 4(a)(iii) of the Policy that the disputed domain name “is being used in bad faith.” See Marina Yachting S.p.A, v. Bonaparte Hotel Group, WIPO Case No. D2008-0900; see also Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Likewise, the fact that the disputed domain name currently resolves to a web page displaying PPC links does not by itself prevent a finding of bad faith. See WIPO Overview 3.0, section 3.5. Taking into account all the circumstances, it is appropriate for the Panel to conclude that Respondent has registered and used the disputed domain name in bad faith. 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 Scott R. Austin
Sole Panelist
Date: April 28, 2021
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