Complainant is Ford Motor Company, United States of America (“United States”), represented by Phillips Winchester, United States.
Respondent is Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf, Iceland / Name Redacted.1
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 25, 2021. On August 26, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 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 August 30, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on September 7, 2021.
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 Respondent of the Complaint, and the proceedings commenced on September 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 28, 2021.
On September 14, 2021, the Center received an email from Respondent (Geneva time). The Response was filed with the Center on September 29, 2021.
The Center appointed Bradley A. Slutsky as the sole panelist in this matter on October 13, 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 BackgroundComplainant Ford Motor Company is the well-known manufacturer of automobiles, which was founded in 1903. Complainant has many trademark registrations for the FORD and FORD MOTOR COMPANY trademarks, dating back to at least 1909. Among others, Complainant owns the trademark FORD No. 74530, registered on July 20, 1909 in International class 12.
Respondent registered the disputed domain name on July 5, 2021. There is no website at the disputed domain name, but Complainant alleges that Respondent is using the disputed domain name for phishing.
5. Parties’ Contentions A. ComplainantComplainant asserts that it manufactures and distributes automobiles in approximately 200 markets, has over 180,000 employees, and has over 100 plants worldwide. Complainant asserts that the FORD mark has been in use since 1895 and is known worldwide. Complainant asserts that Respondent has not used the disputed domain name to operate a website, but rather “has used the domain name to send emails impersonating Ford personnel in apparent furtherance of a phishing scheme.” Attached to the Complaint is a sample of such an email, purporting to be from a Ford employee and using the “FORD BLUE OVAL” logo and requesting information about how to set up an account to purchase motor oil. Complainant asserts that the disputed domain name incorporates Complainant’s FORD trademark and “is a confusingly similar variant of Ford’s business name Ford Motor Company, which is itself a registered trademark.” Complainant also asserts that Respondent has no rights or legitimate interests in the disputed domain name, in that “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.” Complainant further notes that Respondent’s alleged phishing scheme “is not legitimate and cannot establish legitimate rights.” Finally, Complainant asserts that “[g]iven the strength and fame of the Ford Marks, Respondent’s bad faith is established by the fact of registration alone. 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 Ford’s prior rights.” Complainant notes that the use of the disputed domain name to send email messages that purported to original from Complainant and that used Complainant’s mark and logo “conclusively proves Respondent was aware of the trademark significance of the domain name.”
B. RespondentA Response was filed by an individual with the same name as the one provided for the registration of the disputed domain name but denying that he is the registrant of the disputed domain name. Instead, he states that he “has no connection with the [disputed] domain name” and that the disputed domain name “was registered to [his] name without [his] knowledge or authority.” He further asserts that he is an improper party to the proceeding and should be dropped from it, and that he “takes no position with respect to a transfer of the subject domain name to Complainant, because [he] neither has nor claims any right, title or interest in the disputed domain name. To the extent [he] is deemed to have authority to do so, [he] consents to the remedy requested by the Complainant provided it is granted in rem and does not expressly or implicitly include a finding of fact or conclusion of law that [he] engaged in any improper conduct. The remedy sought by [him] is that [he] be dropped from this proceeding.”
C. Complainant’s ReplyIn reply to the Response, Complainant’s attorney sent an email to WIPO indicating that “Complainant [does not] have any objection to WIPO’s recaptioning of the matter to remove [Name Redacted] as the named respondent, as Complainant has no reason to doubt the truthfulness of his contention that he has nothing to do with the domain name registration and that his name and contact information were used by the true registrant without his knowledge or consent.”
6. The Proper RespondentName Redacted denies that he registered the disputed domain name, and Complainant states that it has no reason to doubt that Name Redacted has nothing to do with the disputed domain name and that his name and contact information were used without his knowledge or consent. As there is no dispute on this point, the Panel accepts that the individual who responded to the Complaint is not the person who registered the disputed domain name. Instead, references in this decision to Respondent should be deemed to refer to the person who registered the disputed domain name while identifying himself with the name of a third party, and who caused or permitted its identity to be further anonymized by Withheld for Privacy ehf.
7. Discussion and FindingsPursuant to paragraph 15(a) of the Rules, a panel in UDRP proceedings “shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Under paragraph 4(a) of the Policy, Complainant must prove 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) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly SimilarUnder paragraph 4(a)(i) of the Policy, Complainant must show that the disputed domain name is “identical or confusingly similar to a trademark or service mark in which Complainant has rights”.
Complainant’s trademark registrations demonstrate that Complainant has rights in the FORD and FORD MOTOR COMPANY marks.
The disputed domain name consists of the FORD mark, followed by the words “Auto” and “motor”, followed by the “.com” generic Top-Level-Domain (“gTLD”). Alternatively, the disputed domain name consists of Complainant’s FORD MOTOR COMPANY mark, with “auto” inserted between “ford” and “motor”, and with “.com” substituted for “COMPANY”. Generally, “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”. WIPO Overview of Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. Thus, the addition of “auto motor” does not prevent a finding of confusing similarity between the disputed domain name and Complainant’s marks on the facts of this case. See WIPO Overview 3.0, section 1.8 (“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”) “Indeed, where, as here, the generic word describes the goods or services of the Complainant, its addition contributes to the confusion.” Deutsche Lufthansa AG v. Nadeem Qadir,WIPO Case No. D2009-0003. The addition of the “.com” gTLD also does not prevent a finding of confusing similarity. WIPO Overview 3.0, section 1.11.1 (“The 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.”).
Accordingly, the Panel finds that the disputed domain name is confusingly similar to marks in which Complainant has rights, and that paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate InterestsComplainant also must demonstrate that Respondent has “no rights or legitimate interests in respect of the domain name”, paragraph 4(a)(ii) of the Policy.
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [Respondent’s] rights or legitimate interests to the [disputed] domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to [Respondent] of the dispute, [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) [Respondent] (as an individual, business, or other organization) ha[s] been commonly known by the [disputed] domain name, even if [Respondent has] acquired no trademark or service mark rights; or
(iii) [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.” Policy, paragraph 4(c).
There is no evidence that Respondent was making a bona fide use of the disputed domain name before receiving notice of this dispute, or that Respondent has been commonly known by the disputed domain name, or that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. Rather, Complainant asserts that “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, […] has never made any bona fide use of the Disputed Domain Name”, and instead is using the disputed domain name for a phishing scheme in an attempt to defraud Complainant’s suppliers.
These allegations make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, which has not been rebutted. See, e.g., Ford Motor Company v. Whoisguard Protected, WhoisGuard, Inc. / Domain Admin, Whois Privacy Corp. and Tree Inc,WIPO Case No. D2020-2500 (“using the Domain Names to host fraudulent email addresses in aid of a phishing scam cannot be considered a legitimate reason for registering the Domain Name”); LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master,WIPO Case No. D2010-0138 (“It is clear that no license or authorization of any kind has been provided by Complainant to Respondents to use any of its trademarks or to apply for or use any domain name incorporating those marks. […] Thus, it is clear that no bona fide or legitimate use of the domain names could be claimed by Respondents.”); WIPO Overview 3.0, section 2.13.1 (“Panels have categorically held that the use of a domain name for illegal activity (e.g., … phishing, […] impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent.”).
Accordingly, the record supports a conclusion that Respondent has no rights or legitimate interests in respect of the disputed domain name, and that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad FaithComplainant also bears the burden of establishing that the “domain name has been registered and is being used in bad faith”. Policy, paragraph 4(a)(iii). As set forth in the Policy, paragraph 4(b):
“[T]he following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that [Respondent has] registered or [Respondent has] acquired the [disputed] domain name primarily for the purpose of selling, renting, or otherwise transferring the [disputed] domain name registration to [C]omplainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of [Respondent’s] documented out-of-pocket costs directly related to the [disputed] 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.”
“Given that the scenarios described in UDRP paragraph 4(b) are non-exclusive and merely illustrative, even where a complainant may not be able to demonstrate the literal or verbatim application of one of the above scenarios, evidence demonstrating that a respondent seeks to take unfair advantage of, abuse, or otherwise engage in behavior detrimental to Complainant’s trademark would also satisfy Complainant’s burden.” WIPO Overview 3.0, section 3.1.
Complainant asserts that “[g]iven the strength and fame of the Ford Marks, Respondent’s bad faith is established by the fact of registration alone.” That statement may not always be correct – for example, in the case of a true fair use. However, in this case, the use of the disputed domain name to send phishing emails in the name of Complainant is sufficient evidence of bad faith. The registration and use of a domain name (that is confusingly similar to another party’s trademark) for phishing, is evidence of bad faith under paragraph 4(b)(iv) of the Policy. WIPO Overview 3.0, section 3.1.4 (“given that the use of a domain name for per se illegitimate activity such as the sale of counterfeit goods or phishing can never confer rights or legitimate interests on a respondent, such behavior is manifestly considered evidence of bad faith”); WIPO Overview 3.0, section 3.4 (“Panels have held that the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending email, phishing, identity theft, or malware distribution. (In some such cases, the respondent may host a copycat version of the complainant’s website.) Many such cases involve the respondent’s use of the domain name to send deceptive emails, e.g., to obtain sensitive or confidential personal information from prospective job applicants, or to solicit payment of fraudulent invoices by the complainant’s actual or prospective customers.”); Ford Motor Company v. Whoisguard Protected, WhoisGuard, Inc. / Domain Admin, Whois Privacy Corp. and Tree Inc,WIPO Case No. D2020-2500 (“Respondent clearly had Complainant and its famous FORD trademark in mind when registering the Domain Names. This is apparent by the use to which Respondent has put the Domain Names, including as fake email addresses used in a fraudulent phishing scam attempted on at least one of Complainant’s suppliers. This phishing scam is clearly a fraudulent and bad faith use of the Domain Names.”). The use of false contact information – and particularly false contact information behind a privacy service – also supports an inference of bad faith. WIPO Overview 3.0, section 4.4.6 (“panels have found that where a ‘disclosed’ registrant is in turn what appears to be yet another privacy or proxy service (sometimes referred to as a ‘Russian doll’ scenario) or prima facie appears to be a false identity, such multi-layered obfuscation or possible cyberflight may support an inference of a respondent’s bad faith, e.g., in an attempt to shield illegitimate conduct from a UDRP proceeding.”).
Accordingly, the Panel finds that the record supports a conclusion that the disputed domain name has been registered and is being used in bad faith, and that paragraph 4(a)(iii) of the Policy is satisfied.
8. DecisionFor 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
Bradley A. Slutsky
Sole Panelist
Date: October 27, 2021
1 The Respondent appears to have used the name of a third party when registering the disputed domain name. In light of the potential identity theft, the Panel orders that the Respondent’s name be redacted from this decision. The Panel has attached as Annex 1 to this decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of the Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this decision should not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST 12785241 Attn. Bradescourgente.net / Name Redacted,WIPO Case No. D2009-1788.