ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION FORD MOTOR COMPANY v. Aftab Khalid, HawksDistribution Case No. D2025-2158 1. The Parties Complainant is FORD MOTOR COMPANY, United States of America (“USA” or “U.S.”), represented by Kucala Burgett Law LLC, USA. Respondent is Aftab Khalid, HawksDistribution, USA. 2. The Domain Name and Registrar The disputed domain name (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 2, 2025. On June 3, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. That same day, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent (Withheld for Privacy Purposes) and contact information in the Complaint. The Center sent an email communication to Complainant on June 4, 2025, 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 June 10, 2025. 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 June 11, 2025. In accordance with the Rules, paragraph 5, the due date for Response was July 1, 2025. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 3, 2025.
page 2 The Center appointed Harrie R. Samaras as the sole panelist in this matter on July 9, 2025. 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, founded in 1903, manufactures and distributes automobiles across six continents, in approximately 200 markets, and employs approximately 170,000 employees worldwide. It has approximately 9,000 dealerships worldwide including about 3,000 dealerships in the USA. Complainant owns many trademark registrations in the USA and worldwide for the MOTORCRAFT Mark covering a wide range of automotive parts and related goods. Complainant obtained its first U.S. trademark registration for the MOTORCRAFT mark on January 3, 1961 (U.S. Reg. No. 709,311) (the “MOTORCRAFT Mark” or the “Mark”). It has used that Mark since 1959 in connection with automotive parts, including, filters. Complainant operates a website for parts sold under the MOTORCRAFT Mark at , which it has operated since 2002. The Domain Name was registered on October 18, 2024. In late March 2025, Complainant learned that the Domain Name was being used on an associated website to sell counterfeit products bearing the Mark, including oil, fuel and air filters (the “Website”). On or about April 2, 2025, Complainant’s representative sent a cease-and-desist letter to Respondent however, Respondent failed to respond. About April 23, 2025, Complainant’s representative also contacted the privacy service and the Registrar to request that Respondent’s identity and contact information be released due to the illegal counterfeit activities associated with the Domain Name. Both, declined to provide that information. Around this timeframe, Complainant learned that the Domain Name may also have been used to distribute malware insofar as anti-virus software detected that the Website is “dangerous” and that the threat category is URL: Malvertising. Currently, the Domain Name resolves to a webpage that states in part: “This store does not exist.” On that same page there is a tab that invites the public to “Start a free trial” of Shopify and another tab that invites the public to “Explore other stores” selling a variety of products. 5. Parties’ Contentions A. Complainant Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Domain Name. Notably, Complainant contends that the Domain Name wholly incorporates the MOTORCRAFT Mark, and that consumers will associate the Domain Name with Complainant. Adding the term “filter” does not prevent a likelihood of confusion with the Mark, rather, it contributes to confusion because Complainant markets filters under its MOTORCRAFT Mark and filters are listed under the aforementioned trademark registration. Complainant maintains that: Respondent is not known by the Domain Name; it has not authorized Respondent to use the Mark; and it does not have a connection or affiliation with Complainant. Complainant also argues that Respondent has not made a bona fide use of the Domain Name because Respondent has used it to sell counterfeit products under the Mark and potentially distribute malware. Given the strength of the Mark, Complainant argues that Respondent’s bad faith is established by the fact of registration alone. Respondent’s awareness of the MOTORCRAFT Mark is also inferred because it was registered in the USA long before Respondent registered the Domain Name. Bad faith is further established
page 3 by Respondent’s use of the Domain Name to sell counterfeit products and to spread malware. With knowledge of the Mark, and after over 20 years of Complainant’s use and operation of its official MOTORCRAFT parts website, Complainant argues that Respondent intentionally registered the Domain Name to unfairly benefit commercially from the reputation and goodwill of the Mark. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar 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. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The entirety of the Mark is reproduced within the Domain Name. Accordingly, the Domain Name is confusingly similar to the Mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the addition of other terms here, “filter”, may bear on assessment of the second and third elements, the Panel finds the addition of that term does not prevent a finding of confusing similarity between the Domain Name and the Mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the available record, the Panel finds Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name. Respondent has not rebutted Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the Domain Name such as those enumerated in the Policy or otherwise. Respondent is not commonly known by the Domain Name, Complainant has not authorized Respondent to use the Mark for any purpose, and Respondent does not have any connection or affiliation with Complainant. Also, Respondent has not made a bona fide use of the Domain Name because Respondent has used it to sell possibly counterfeit products under the Mark and possibly to distribute malware. Even if the goods
page 4 allegedly offered on the Website were genuine, given the lack of disclaiming information on the Website, the Panel finds that the use of the Domain Name does not fall within the scope of fair use. WIPO Overview 3.0, section 2.8. Panels have held that the use of a domain name for illegal activity, here claimed as the sale of counterfeit goods and possibly distributing malware, can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In the present case, the Panel notes that Respondent chose for a Domain Name a well-known registered trademark that Complainant has used for over 60 years (since 1959) and added the term “filter” which is a product that Complainant sells under the Mark. Furthermore, Respondent was using the Domain Name in conjunction with the website to sell possibly counterfeit products, including filters, using both the Mark as well as Complainant’s well-known Ford trademark. Also, but for the term “filter”, the Domain Name is the same as the domain name that Complainant uses to sell parts under the Mark (), which it has operated since 2002. For all of these reasons, it is more likely than not that Respondent knew of Complainant and its rights in the Mark before registering the Domain Name. Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. Here, Complainant sent Respondent a cease-and-desist letter and Respondent failed to respond. The Panel notes that considering the distinctiveness and reputation of Complainant’s Mark, the composition of the Domain Name, and that Respondent has already used the Domain Name for illegal activity, the fact that Respondent is not currently using the Domain Name does not prevent a finding of bad faith under the Policy. Indeed, Respondent may be profiting when the public clicks on the tab to “Start a free trial” of Shopify or to “Explore other stores” selling a variety of products. Moreover, Panels have held that the use of a domain name for illegal activity here, claimed as the sale of counterfeit goods and distributing malware, constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds Respondent’s registration and use of the Domain Name constitutes bad faith under the Policy. The Panel finds that Complainant has established the third element 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 Domain Name be transferred to Complainant. /Harrie R. Samaras/ Harrie R. Samaras Sole Panelist Date: July 23, 2025
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