The Complainant is Ford Motor Company, United States of America (“United States” or “US”), represented by GPI MARQUES, France.
The Respondent is Domains By Proxy, LLC, DomainsByProxy.com, United States / Celio Triay, United Kingdom.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 27, 2021. On September 27, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 7, 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 the Complainant on October 8, 2021, 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 October 11, 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 the Respondent of the Complaint, and the proceedings commenced on October 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 4, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 29, 2021.
The Center appointed Cherise Valles as the sole panelist in this matter on December 14, 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 BackgroundThe Complainant was founded under the name Ford Motor Company in 1903 to produce and sell automobiles designed and engineered by Henry Ford. The Complainant is one of the world’s largest automakers. The Complainant has operations in over 125 countries around the world, with over 180,000 employees. The Complainant designs manufactures, markets, and services a full line of Ford trucks, utility vehicles, and cars – increasingly including electrified versions – and Lincoln luxury vehicles (Annex 4).
Since 1908, the Complainant has been, and continues to be, present in France. As early as 1907, the very first Ford cars imported into France were marketed by an innovative entrepreneur: Henri Depasse. In order to provide all the sales and after-sales services expected by an already demanding French public, a new type of business began to take hold, in the form of what is still called "a car dealership." The success of the Ford T, presented at the Paris Motor Show in 1908, led Ford to buy the Bordeaux facilities of its importer-distributor. The Complainant opened its first overseas sales branch in Paris (Annex 5). The Complainant has used the FORD trademark for more than a century in connection with automobiles and automobile parts and accessories, and as a result, the FORD trademark is famous. The FORD trademark has been recognized in various media sources as one of the 100 most valuable brands in the world (Annex 6). The Complainant owns numerous FORD trademark registrations around the world.
The Complainant noticed that the domain name had been registered through an anonymization service GoDaddy (Annex 1).
The disputed domain name
The disputed domain name is being used to offer competing services in the field of automobiles. At the time of the decision, the disputed domain name resolves to an active website that features the Complainant’s FORD mark, the Ford logo and references to “site officiel”, which means “official website” in English.
5. Parties’ Contentions A. ComplainantThe Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, the Complainant asserts that:
The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
- The disputed domain name is confusingly similar to the Complainant’s registered FORD trademark, in light of the fact that it wholly incorporates the Complainant’s mark.
The Respondent lacks rights or legitimate interests in the disputed domain name.
- The Complainant states that the Respondent should be considered as having no rights or legitimate interests in the disputed domain name. The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name that included its trademarks.
The disputed domain name has been registered and is being used in bad faith.
- The Complainant asserts that the disputed domain name was registered and is being used in bad faith. The mere fact of registration of a domain name that is confusingly similar or identical to a famous trademark by an entity that has no relationship to that mark is itself evidence of bad faith registration and use. Furthermore, the Respondent’s impersonating and/or competing uses of the disputed domain name is clear evidence of bad faith.
The Complainant requests the Panel to issue a decision finding that the disputed domain name be transferred to the Complainant, in accordance with paragraph 4(i) of the Policy.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsThe Policy provides specific remedies to trademark owners against registrants of domain names where the owner of the mark (a complainant) establishes each of the following elements:
(i) the disputed domain name is identical or confusingly similar to a trademark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the dispute domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
The Complainant has the burden of proof in establishing each of these elements.
The Respondent has failed to file a Response in this proceeding. The Panel may draw appropriate inferences from the available evidence submitted by the Complainant.
A. Identical or Confusingly SimilarTo prove this element, the Complainant must have trademark rights and the disputed domain name must be identical or confusingly similar to the Complainant’s trademark.
The Complainant is the owner of many trademarks, including the following trademark registrations (Annex 11):
- European Union trademark FORD n° 004670618 filed on October 24, 2005, and registered on April 1, 2008, (renewed) to cover goods and services in Classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 11, 12, 14, 16, 17, 18, 20, 21, 22, 24, 25, 27, 28, 33, 34, 35, 36, 37, 38, 39, 40, 41, 42, and 43;
- European Union trademark n° 008430704 filed on July 16, 2009, and registered on May 27, 2010, (renewed) to cover goods and services in Classes 12, 35, and 37.
- UK trademark n° UK00908430704 filed on July 16, 2009, and registered on May 27, 2010, (renewed) to cover goods and services in Classes 12, 35, and 37.
The Complainant submits that the disputed domain name is confusingly similar to the trademark in which it has rights. The disputed domain name incorporates the “Ford” trademark in its entirety with the addition of the letters “coc” which can be understood as the abbreviation of “certificate of conformity”, used in French to designate the certificate of conformity of a car. Given the Complainant’s trademark registrations as detailed above, the Complainant has established its trademark rights in the term "FORD" for the purposes of paragraph 4(a)(i) of the Policy.
As stated in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) “[w]here 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”.
The disputed domain name is confusingly similar to the Complainant’s trademark FORD. Indeed, the disputed domain name substantially reproduces the Complainant’s trademark in its entirety, which previous UDRP panels have considered to be “well-known” or “famous”. See Ford Motor Company (Ford) v. Will Real,WIPO Case No. D2021-0229; Ford Motor Company v. Myke Towers,WIPO Case No. D2021-0081; Ford Motor Company v. RegC, Liz Schlumbrecht / Private Registration, 1&1 Internet Inc.,WIPO Case No. D2019-1714. Panels have considered that the incorporation of a well-known trademark in its entirety may be sufficient to establish that the domain name is identical or confusingly similar to a Complainant’s registered trademark. The disputed domain name is confusingly similar to the Complainant's trademark, because it contains the trademark in full and merely adds the letters “coc”, which are the abbreviation of “certificate of conformity”, used in French to designate the certificate of conformity of a car.
The disputed domain name includes a generic Top-Level Domain (“gTLD”) “.net”. It is standard practice when comparing a disputed domain name to a complainant’s trademark not to take the gTLD into account. See section 1.11.1 of the WIPO Overview 3.0, which states that the “applicable gTLD 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 of the confusing similarity test”. In this case, the gTLD “.net” is disregarded under the first element of the confusing similarity test.
In the light of the foregoing, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark and that paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy enumerates three non-exclusive ways in which a respondent may demonstrate rights or legitimate interests in a domain name (with “you” referring to the Respondent):
“[a]ny 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 your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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 Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).
Previous UDRP panels have held that a complainant must establish a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production to the respondent. See, The American Automobile Association, Inc. v. PrivacyProtect.org/ Domain Tech Enterprises and The American Automobile Association, Inc. v. PrivacyProtect.org/Tarun Kumar and The American Automobile Association, Inc. v. Publishier LLC, WIPO Case No. D2011-2202, where the panel notes that a complainant need only show a prima facie case that the respondent lacks rights or legitimate interests in a disputed domain name in order to shift the burden of production to the respondent. If the respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
On the evidence before the Panel, it appears that there has never been any relationship between the Complainant and the Respondent. The Respondent does not seem to be licensed, or otherwise authorized, be it directly or indirectly, to register or use the Complainant’s FORD trademark in any manner, including in, or as part of, the disputed domain name.
The Complainant asserts that the Respondent is unable to invoke any of the circumstances set out in paragraph 4(c) of the Policy in order to demonstrate rights or legitimate interests in the disputed domain name. In particular, the Respondent cannot assert that, prior to any notice of this dispute, he was using, or had made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy.
The Complainant submits that the Respondent is not a licensee, authorized agent of the Complainant, or in any other way authorized to use the Complainant’s trademark. Specifically, the Respondent is not an authorized reseller of the Complainant and has not been authorized to register and use the disputed domain name.
The Complainant asserts that the Respondent is not affiliated with the Complainant in any way, nor has the Respondent been authorized by the Complainant to use and register its trademark, or to seek registration of any domain name incorporating said mark. Furthermore, the Respondent has no prior rights or legitimate interest in the disputed domain name. The registration of several FORD trademarks has preceded the registration of the disputed domain name by many years (Annexes 1 and 11). The Respondent does not appear to be commonly known by the disputed domain name. In previous decisions, UDRP panels found that, in the absence of any license or permission from the Complainant to use such widely-known trademarks, no actual or contemplated bona fide or legitimate use of the domain name could reasonably be found. Moreover, in the light of the fact that the disputed domain name is confusingly similar to the Complainant’s FORD trademark and resolves to a website featuring the Complainant’s FORD mark and Ford logo and has references to “site officiel” (“official website”), the Panel finds that the Respondent cannot reasonably claim that it intends to develop a legitimate activity using the disputed domain name.
The website associated with the disputed domain name, presented in French, purports to offer consumers a Certificate of Conformity (known as “CoC” in English), a document which certifies that the product in question (in this case, an automobile) meets the required standards and specifications. Another term in French used to certify conformity with product standards is “homologation”. The disputed domain name states: “COC Ford est le document d’homologation official Ford” (“COC Ford is official Ford homologation document”). In the FAQs of the disputed domain name, there is a contact email address “[...]@homologationporsche.com” and references to “Homologation Porsche” (Annex 14). Porsche is one of the Complainant’s competitors, and demonstrates that the Respondent is trying to divert customers away from Ford. Internet users have already been deceived by this site and one of them has sent a complaint to Ford France (Annex 15). The Respondent is thus using the disputed domain name to misleadingly divert customers or to tarnish the Complainant’s reputation.
Furthermore, the nature of the disputed domain name, consisting of the Complainant’s FORD mark and a related term, carries a risk of implied affiliation and cannot constitute fair use as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See section 2.5.1 of the WIPO Overview 3.0.
In light of the foregoing, the Panel finds that the Complainant has established an unrebutted prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and concludes that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The term “bad faith” is “broadly understood to occur where a respondent takes unfair advantage of, or otherwise abuses, a complainant’s mark”. See section 3.1 of the WIPO Overview 3.0.
The Complainant asserts that the disputed domain name was registered and was being used in bad faith. Paragraph 4(b) of the Policy lists four factors which, in particular but without limitation, may be evidence of registration and use of a domain name in bad faith for the purposes of paragraph 4(a)(iii) of the Policy.
Previous UDRP panels have found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. See section 3.1.4 of the WIPO Overview 3.0.
Given the worldwide notoriety of the FORD trademark, it is implausible that the Respondent was unaware of the Complainant when it registered the disputed domain name. Bad faith can be found where the respondents “knew or should have known” of the Complainant’s trademark rights and, nevertheless registered a domain name in which it had no rights or legitimate interests. See Research In Motion Limited v. Privacy Locked LLC/Nat Collicot,WIPO Case No. D2009-0320. Several prior UDRP panels have found that the “FORD [trademark] 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 or has a legitimate interest in domain names that incorporate the mark”. See Ford Motor Co. v. Yitao Apex Labs Ltd. Case No. INDRP/672. Given the reputation of the FORD trademark, registration in bad faith can be inferred. In the light of the composition of the disputed domain name, it is unlikely that the Respondent did not have the FORD trademark in mind when registering the disputed domain name. In addition, the website to which the disputed domain name resolves features the Complainant’s FORD mark, its logo, and references to “site officiel” (“official website”). In these circumstances, the Respondent must have had the Complainant’s mark in mind when registering the disputed domain name.
The Complainant considers this situation is similar to that in Dr. Ing. h.c. F. Porsche Aktiengesellschaft v. Domain By Proxy, LLC / Celio Garcera, EURO COC Ltd / Celio Triay,WIPO Case No. D2020-0045, as the fraudulent websites are almost identical in terms of graphic content. Indeed, one of the disputed domain names featured almost identical construction, namely the abbreviation “coc” separated from the targeted trademark by a hyphen. In this case, the panel held that the “Respondent registered and used the domain names in bad faith. Given the fame of Complainant’s PORSCHE mark, the fact that PORSCHE does not correspond to a dictionary term, but instead is fanciful, and the fact that Respondent liberally uses Complainant’s PORSCHE emblem throughout the website, it is certain that Respondent had Complainant’s mark in mind when registering the Domain Names”. Accordingly, the Panel comes to the same conclusion here.
The disputed domain name is not used in any type of legitimate business or services. Rather, it is used in a phishing scheme, whereby Ford’s customers or general Internet users are being misled and deceived into believing they are dealing with the legitimate owner of the trademark. Consequently, panels have also concluded that the use of disputed domain names for the purpose of defrauding Internet users by the operation of a “phishing” website is perhaps the clearest evidence of registration and use of a domain name in bad faith. See OLX, Inc. v. J D Mason Singh,WIPO Case No. D2014-1037.
Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name under paragraph 4(a)(iii) of the Policy.
7. 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
Cherise Valles
Sole Panelist
Date: December 28, 2021