WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ford Motor Company and Ford-Werke Aktiengesellschaft v. Common Sense Enterprises, Inc.
Case No. DBIZ2002-00227
1. The Parties
The Complainants in this proceeding are Ford Motor Company having a principal place of business at Suite 600, Parklane Towers East, One Parklane Boulevard, Dearborn, Michigan 48126-2490, USA, and its wholly-owned German subsidiary, Ford-Werke Aktiengesellschaft (hereinafter individually and collectively referred to as "Complainants").
The Respondent is Common Sense Enterprises, Inc., the registrant of the domain name in issue ("Respondent"), with a listed mailing address of 40729 Village Drive, P.O. Box 1989-233, Big Bear Lake, CA 92315, USA.
2. The Domain Name and Registrar
The domain name in issue is <escort.biz> ("domain name").
The registrar of the domain name is PSI-Japan, Inc. ("Registrar") with a corporate address of Asahi Sanban-cho Plaza #206, 7-1 Sanban-cho, Chiyoda-ku, Tokyo 102-0075, Japan.
3. Procedural History
On May 7, 2002, the Complainants filed a Complaint with the WIPO Arbitration and Mediation Center (the "Center") concerning the domain name and naming Swarthmore Associates, LLC, as the Respondent and paid the required filing fee for appointing a single member Panel.
On July 3, 2002, the Center sent the Complainants a STOP Complaint Deficiency Notification stating that the current registrant of record for the domain name was not "Swarthmore Associates, LLC", the entity specified in the Complaint as the Respondent. On July 3, 2002, the Complainants filed an Amended Complaint with the Center naming the new registrant listed in the domain name record, "Common Sense Enterprises, Inc.", as the Respondent.
On July 7, 2002, the Center found the Complaint to be in compliance with the formal requirements of the Start-Up Trademark Opposition Policy for <.BIZ> ("STOP"), adopted by NeuLevel, Inc. ("NeuLevel"), and approved by the Internet Corporation for Assigned names and Numbers ("ICANN"), the Rules for Start-up Trademark Opposition Policy for <.BIZ> (the "Rules"), adopted by NeuLevel and approved by ICANN and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for <.BIZ> (the "Supplemental Rules"). On July 10, 2002, the Center sent a "Notification of STOP Complaint and Commencement of Administrative Proceeding" ("Notification") and the Amended Complaint to the Respondent at the postal addresses and e-mail address listed in the domain name registration. The Center confirmed delivery of communications sent to the Respondentís postal addresses and received no error messages with respect to the e-mail transmission of these documents. The Center made three facsimile transmission attempts to send the Notification and the Amended Complaint to the Respondent at the facsimile number listed in the domain name registration and received error messages following each of the attempts.
On August 1, 2002, after the twenty-day period had expired as required by paragraph 5 of the Rules and the Supplemental Rules and no response from the Respondent was received, the Center sent a "Notification of Respondent Default" to the Respondent by e-mail with a copy to the Complainants.
On August 15, 2002, the undersigned Panelist submitted a "Statement of Acceptance and Declaration of Impartiality and Independence" with the Center and the Center sent a "Notification of Appointment of Administrative Panel and Projected Decision Date" by e-mail to the parties.
On August 23, 2002, the Panelist submitted an "Administrative Panel Procedural Order No. 1" ("Panelistís Order No. 1") with the Center requesting further submissions from the Complainants. The Complainants submitted a "Supplemental Submission" ("Complainantsí Supplemental Submission") on August 29, 2002. No reply to the Panelistís Order No. 1 was received from the Respondent by the Center.
The Panelist notes that the Complaint properly shows that the Complainants filed an IP Claim and that the Complainants were provided with a ticket number by the Registry Operator. The Center has also confirmed that there are no other additional IP claimants in the queue for the domain name.
Having reviewed the entire record submitted for this proceeding, the Panelist concurs with the Centerís finding that the Amended Complaint is in compliance with STOP, the Rules and the Supplemental Rules and finds that the panel was properly constituted and appointed. The Panelist also finds that the Center has properly notified the Respondent of the proceeding in accordance with paragraph 2(a) of the Rules and that the Respondent is in default for failing to file a response to the Complaint or to the Panelistís Order No. 1. The Panelist shall therefore draw inferences from the Respondentís default as the Panelist considers appropriate based upon paragraph 14(b) of the Rules and shall issue a decision based on the Amended Complaint, the Complainantsí Supplemental Submission, STOP, the Rules and the Supplemental Rules.
4. Factual Background
The Complaint is based on four U.S. federal registrations for the trademark ESCORT, including Reg. No. 1,532,915 (first use December 31, 1979; first use in commerce August 31, 1980; issued April 4, 1989) for the mark ESCORT used in connection with automobiles and their structural parts; Reg. No. 1,906,301 (first use and first use in commerce May 1, 1994; issued July 18, 1995) for the mark ESCORT used in connection with metal goods, namely key rings, key fobs, money clips, non-luminous non-mechanical signs, banks, decorative boxes, license plates; Reg. No. 1,924,642 (first use and first use in commerce May 1, 1994; issued October 3, 1995) for the mark ESCORT used in connection with key fobs and rings not made of metal, non-metal license plates, non-metal money clips, hand-held and wall mirrors, desk ornaments made of bone, ivory, plaster, plastic, wax and wood, plaques, stools, seat cushions, portable chairs, pillows, non-metal clamps, plastic flags; and Reg. No. 1,997,638 (first use and first use in commerce April 12, 1993; issued August 27, 1996) for the mark ESCORT used in connection with miniature models of vehicles, toy vehicles, and hobby kits for the construction of miniature vehicles. The Complainant, Ford Motor Company, is the listed owner for these trademark registrations. The Complainants provided copies of the U.S. registration information for the above marks (hereinafter referred to as the "Complainantsí Mark") as Exhibit B to the Complaint and as Exhibit C to the Amended Complaint.
The domain name was registered on March 27, 2002, to Swarthmore Associates, LLC. After the Complaint for the present proceeding was filed, the domain name was transferred to Common Sense Enterprises, Inc. Based upon a review of the uncontested evidence submitted, Swarthmore Associates, LLC, and Common Sense Enterprises, Inc., will hereinafter be referred to individually and collectively as the "Respondent." There is currently no web page accessible at the domain name. A copy of the whois information for the domain name was attached as Exhibit A to the Complaint and as Exhibits A and B to the Amended Complaint.
5. Partiesí Contentions
The Complainants assert that the domain name is identical to numerous registered and valid trademarks held by the Complainants for the ESCORT mark.
The Complainants assert that the Respondent has no rights or legitimate interests in the domain name. The Complainants asserts that at the time of the Respondentís application and registration of the domain name, the Respondent had neither used nor had any plan to use the mark ESCORT. The Complainants assert that the Respondent does not own any trademark rights in the mark ESCORT and has no trademark or service mark applications on file or pending for the mark. The Complainants further assert that the Respondent has not used the mark ESCORT or made any demonstrable preparations to use the mark ESCORT, that the Respondent has not registered to do business under the ESCORT name and that the Respondent has not given any public or verifiable indication of any intent to use the mark ESCORT. The Complainants also assert that the Respondent is not a viable or legitimate entity because the records of the Secretary of State for the State of California indicate that the Respondentís status as a corporation has been suspended.
The Complainants assert that the Respondent registered or is using the domain name in bad faith by registering the domain name which is identical to the Complainantsí Mark. The Complainants assert that the Respondentís lack of use together with the strength of the Complainantsí Mark suggests that the Respondent either intends to recover sums in excess of its out-of-pocket costs related to the domain name by auctioning the domain name to the Complainants or one of its competitors or intends to use the domain name in order to divert Internet users looking for information about the Complainants and their products to a competitor. The Complainants assert that after this proceeding was initiated and after Swarthmore Associates, LLC, had been adjudicated to have acted in bad faith in numerous STOP proceedings, the Respondent changed the registrant name for the domain name to "Common Sense Enterprises, Inc." The Complainants further assert that the Respondent provided false and fictitious contact data to the Registrar, that the Respondent registered the domain name with actual and constructive knowledge of the Complainantsí Mark while having no rights or interest in the domain name, that the Respondent registered numerous famous, well-known marks on a wholesale basis in which the Respondent has no interest and that there are numerous STOP panel decisions that have found the Respondent to have acted in bad faith.
No response was received from the Respondent with respect to this proceeding.
6. Discussion and Findings
The Proceeding - Three Elements
Paragraph 4(a) of STOP states that the registrant of a domain name is required to submit to a mandatory administrative proceeding in the event that a third party complainant asserts to an applicable dispute resolution service provider, in compliance with the Rules, that:
(i) the registrantís domain name is identical to a trademark or service mark in which the complainant has rights ("Element (i)"); and
(ii) the registrant has no rights or legitimate interests in respect of the domain name ("Element (ii)"); and
(iii) the registrantís domain name has been registered or is being used in bad faith ("Element (iii)").
The Panelist can only rule in a complainantís favor only after the complainant has proven that the above-listed elements are present.
Element (i) - Domain Name Identical to the Mark
The Complainants has provided sufficient documentation showing that Ford Motor Company is the owner of the above-identified U.S. registrations for the trademark ESCORT. When comparing the second-level domain <escort> of the domain name with the Complainantsí Mark, the Panelist finds that the domain name is identical to the Complainantsí Mark. Although the domain name also consists of the top level domain BIZ, such is not relevant in determining whether a domain name is identical to a mark in a STOP proceeding. The Panelist therefore concludes that Element (i) has been satisfied.
Element (ii) - Rights or Legitimate Interests in the Domain Name
No evidence has been presented that the Respondent is commonly known by the domain name or that the Respondent is the owner or beneficiary of a trademark or service mark registration or pending application for the mark ESCORT. Furthermore, no evidence has been presented that at any time have the Complainants ever assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the Complainantsí Mark in any manner.
No evidence has been presented that, before any notice to the Respondent of this dispute, the Respondent had been using or was making demonstrable preparations to use the domain name in connection with any type of bona fide offering of goods or services. In addition, a review of the evidence submitted shows that the Complainantsí first use and first use in commerce of the Complainantsí Mark well predates the Respondentís registration of the domain name. Furthermore, a review of the evidence shows that since the Respondentís registration of the domain name, the Respondent has not used or demonstrated any plans to use the domain name in connection with a bona fide offering of goods or services. Nor has the Respondent provided a response or evidence to support a showing of a right or legitimate interest in the domain name or to even contest the Complainantsí assertions and submitted evidence. The Panelist therefore concludes that Element (ii) has been satisfied based on the Respondent having failed to establish rights or legitimate interests in the domain name.
Element (iii) - Domain Name Registered or Used in Bad Faith
The Complainants have shown that after the Complaint was filed against Swarthmore Associates, LLC, the registrant name and contact information were changed in the record for the domain name to Common Sense Enterprises, Inc. Paragraph 8(a) of STOP provides that a registrant "may not transfer a domain name registration that is subject to this Policy to another holder until all pending or prospective challenges pursuant to this Policy have been resolved." Such a restriction is aimed at preventing "cyberflying", where a registrant of a domain name named in a domain name dispute proceeding systematically transfers the domain name to a different registrant to disrupt the proceeding. Imperial Chemical Industries, PLC v. Oxford University, WIPO Case No. D2001-0292. The Complainants have provided sufficient evidence showing that the Respondent changed the registration information for the domain name after receiving the Complaint and the Respondent has failed to provide a response to even justify such a change. In addition, the Complainants have shown that the Respondent not only provided false contact information when initially registering the domain name but also when the registration information in the domain name whois record was changed in violation of STOP.
The Complainants have also submitted evidence of the Respondent having registered domain names incorporating the marks of third parties and having been found to have registered such domain names in bad faith in other STOP decisions. See, e.g., Cox Communications Inc. v. Common Sense Enterprises, Inc., NAF FA 0207000114751 (August 22, 2002); AT&T Corp. v. Swarthmore Associates, LLC, WIPO Case No. DBIZ2002-00077 (July 23, 2002); American Express Company v. Swarthmore Associates, LLC, NAF FA0204000110759 (July 10, 2002); MDU Resources Group, Inc. v. Swarthmore Associates, LLC, NAF FA0112000102957 (February 26, 2002). When also considering that the Respondent was placed on actual and constructive notice of the Complainantsí Mark and rights therein based on the Complainants filing an IP Claim in this STOP proceeding and the Respondent still registering the domain name along with the lack of a response from the Respondent, the Panelist finds that such uncontested assertions and evidence support a finding of bad faith registration.
When viewing the uncontested assertions and evidence in their entirety along with the above finding that the Respondent has no rights or legitimate interests in the domain name, the Panelist concludes that the Respondent registered the domain name in bad faith and that Element (iii) has been satisfied.
The Panelist concludes that: (i) the domain name is identical to the Complainantsí Mark; (ii) the Respondent has no rights or legitimate interests in the domain name; and (iii) the Respondent has registered the domain name in bad faith. There are no further challenges under STOP against the domain name. Therefore, in accordance with paragraph 4(i) of STOP and paragraph 15 of the Rules, the Panelist requires that the registration of the domain name be transferred to the Complainant, Ford-Werke Aktiengesellschaft.
Dated: September 10, 2002