WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ford Motor Company and Ford Motor Credit Company v. Michele Dinoia
Case No. D2007-0662
1. The Parties
The Complainant is Ford Motor Company and Ford Motor Credit Company, of Dearborn, Michigan, United States of America, represented by Cody W. Zumwalt, United States of America.
The Respondent is Michele Dinoia, of Pineto, Italy.
2. The Domain Names and Registrar
The disputed domain names <ford-credit.com> and <fordperformance.com> (herein the “domain names in dispute”) are registered with Tuonome.it.srl.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 2, 2007. On May 4, 2007, and on a number of subsequent occasions, the Center transmitted by email to Tuonome.it.srl a request for registrar verification in connection with the domain names at issue. On May 29, 2007, after numerous reminders, the Center sent an email to the registrar summarizing the registrant and other information gathered from the Complaint and publicly accessible information on the WhoIs database, and requesting the registrar to indicate by June 1, 2007 if any of this information was incorrect. As no reply was received from the registrar, the Center proceeded on June 8, 2007 to verify that, on the basis of the available information, the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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”). On June 16, 2007, Tuonome.it.srl transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 8, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was June 28, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 6, 2007.
The Center appointed J. Nelson Landry as the sole panelist in this matter on July 13, 2007. 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.
With respect to English as the appropriate language of this proceeding wherein the Respondent is from Italy, it is noted that this Respondent was also respondent in at least 26 earlier UDRP complaints within which the Respondent filed a response in English to six of those complaints. This Panel agrees that Respondent is quite capable of understanding and responding to a proceeding in the English language and will suffer no prejudice.
4. Factual Background
The Complainant Ford Motor Company (herein “Complainant Ford Co.”) has continuously used the trademark Ford since 1895 in connection with automobiles and related products and services. The said Complainant has, further to a first trademark registration for FORD in 1909, applied for and obtained at least 115 registrations in the United States (exhibit C), several registrations for the trademarks FORD CREDIT, first use since 1993 and FORD PERFORMANCE, first use since 1998 in the United States and several registrations for the trademark FORD in other countries including registration 206796 in Italy since 1967 (herein the Trademark FORD, FORD CREDIT and FORD PERFORMANCE or the “Trademarks”).
In a recent survey by Business Week and Interbrand the Trademark FORD ranked 30th and in at least five cases cited by the Complainants, the Trademark FORD is considered as a famous trademark in the world.
Complainant Ford Motor Credit Company (herein “Complainant Ford Credit”), an indirect wholly owned subsidiary of Complainant Ford Co. is an important automotive finance company, active since 1959, which provides automotive financing for at least eight automotive dealers and customers in 36 countries with in excess of 140 billion USD in receivable.
Complainant Ford Credit uses its shortened name in its official website, “www.fordcredit.com wherein the Trademark FORD CREDIT appears prominently while in its website “svtford.com” the term Performance is also used with emphasis.
In its advertising, Complainant Ford Co. prominently features the phrase “performance vehicles” in association with several lines of vehicles such as Ford SVT, Lincoln LS and others. The said Complainant also produces and uses the terms “performance, parts” in association with its automobile related products.
The Complainants have spent millions of dollars and expended efforts in advertising, promoting and developing the Trademarks throughout the world.
The domain name <ford-credit.com> was created on August 8, 2001 and the domain name <fordperformance.com> was created on November 1, 2002.
The Complainants have never authorized the Respondent to use any of their Trademarks nor to register the domain names in dispute.
On February 13, 2006, counsel for Complainant Ford Co. sent a written demand to the Respondent seeking the transfer of the domain names in dispute and also alleging the breach by Respondent of the terms of a confidential settlement agreement previously executed by the Respondent with regard to a dispute between the Respondent and the same counsel acting for The Hertz Corporation then a subsidiary of Complainant Ford Co. In response to Complainants’ demand the Respondent agreed to transfer the domain names in dispute in exchange for a payment greater than the registration costs of the domain names in dispute.
The Respondent initially registered the domain names in dispute with Dotster Inc., a US based registrar and subsequent to Complainants’ letter of February 13, 2006, Respondent transferred the said registration to Tuonome.it.srl, an Italian based registrar.
On February 24, 2006, the Complainants sent another letter to the Respondent who thereafter did not communicate with the Complainants.
5. Parties’ Contentions
On the basis of the factual evidence demonstrating the use of the Trademarks FORD since 1895, Ford Credit, since 1959, Performance vehicles and Performance parts associated with the Trademark Ford, the substantial sales of vehicles and parts in association with the Trademark, the substantial expenditure in advertising and promoting the Trademarks in the world and the acknowledgment of its famous character in the Business Week and Interbrand survey, the Complainants submit that the Trademark Ford has become a famous trademark with immense goodwill associated with it and the family of Ford Trademarks, therefore deserving the broadest scope of protection.
In respect of the domain name <fordperformance.com> the Complainants submit that the domain name consists of the famous Trademark FORD combined with the generic term performance and rely on Mahle GmbH v. Mahle Performance, WIPO Case No. D2006-0272 wherein the panel held that the use of the trademark Mahle as the predominant part of the disputed domain name together with the generic term “performance”, and that such use of said domain name is likely to cause confusion among consumers familiar with the Complainant’s trademark Mahle and area of business.
In respect of the domain name <ford-credit.com>, wherein the only difference is the hyphen, the Complainants represent that the difference with the Trademark FORD CREDIT is phonetically indistinguishable from the said domain names in dispute. Furthermore the Complainants, relying on five UDRP decisions, further submit that the Respondent has clearly engaged in “typo-piracy” and again that the domain name in dispute is confusingly similar. See, Borders Properties, Inc. v. Hewitt, NAF Claim No. FA0206000114618; Reuters Ltd. v. Global Net 2000, Inc., WIPO Case No. D2000-0441; Sallie Mae, Inc. v. Ling Shun Shing, WIPO Case No. D2003-0445; Compaq Info. Techs. Group LP v. Seocho, NAF Claim No. 103879 and Wells Fargo & Co. v. Shing, NAF Claim No. 205699.
The Complainants represent that since the Respondent is not known by the domain names in dispute, which use and registration have never been authorized by the Complainants, the Respondent cannot be considered as having any rights or legitimate interests in the domain names in dispute nor having ever made any bona fide use of the said domain names. The Complainants further contend that the use by Respondent of the domain names in dispute to host websites displaying links to unrelated websites, most likely generating revenue by redirecting visitors to such unrelated websites does not constitute use of the domain names in connection with a bona fide offering of goods and services.
According to the Complainants, based on the earlier experience of their counsel in an earlier situation with the Hertz Corporation and the current situation, the Respondent has a practice of attempting to extort “nuisance value” payments (costs exceeding the registration costs) from trademark holders. Again this does not constitute a bona fide use of the domain names in dispute. This is being further corroborated by the change of registrar once the Complainants’ counsel wrote to the Respondent who demanded more than the cost to register the domain names in exchange for the transfer thereof.
The Complainants submit that there are at least four factors which demonstrate Respondent’s bad faith. The first resides in Respondent’s pattern of seeking to extract nuisance value settlements from trademark owners. The second resides in the well-documented pattern of at least 26 cases and practice of registering domain names of which the Complainants cited eight decisions in where the Respondent has been found by panels to be a “type-squatter”. The third factor demonstrating bad faith resides in Respondent’s use of the domain names in dispute to host websites displaying commercial links to unrelated websites.
Finally, the use of the internationally famous Trademark FORD of the Complainants, according to the Complainants, makes it impossible for the Respondent to claim that he was unaware of the Trademark rights of the Complainants. Relying on an earlier decision of 2002 in which the Complainant Ford Co. prevailed in advancing its Trademark international fame, said Complainant again herein seeks entitlement to the recognition of its said famous Trademark and relies on similar factors acknowledged in the decision Chanel, Inc. v. BuyBeauty.com WIPO Case No. D2000-1126, to justify same, namely numerous federal registrations, the acknowledgement of Trademark’s fame by Court and the extensive use thereof for several decades.
On the basis on these representations the Complainants contend that the Respondent has registered and used the domain names in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order for a domain name to be cancelled or transferred:
(i) The domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights, and
(ii) The respondent has no rights or legitimate interest in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
On the basis of the abundant and detailed evidence submitted by the Complainants and summarised herein, this Panel finds that the Complainant Ford Co. has rights in the Trademarks FORD, FORD CREDIT and FORD PERFORMANCE and by reason of the long and extensive use and promotion the Trademarks and said Trademarks have acquired substantial goodwill associated thereto and consequently deserve broad protection.
The similarity of the two domain names in dispute with the famous Trademark FORD and the Trademarks FORD CREDIT and FORD PERFORMANCE is very close, impressive and a situation similar to those present in the UDRP decisions cited by the Complainants, which this Panel adopts.
This Panel finds that the two domain names in dispute are confusingly similar with the said Trademarks.
The first criterion has been met.
B. Rights or Legitimate Interests
The Respondent has not filed any response in this proceeding. Therefore the Panel may accept all reasonable inferences and allegations included in the Complaint and the evidence as true. The Complainants have made a prima facie case that the Respondent lacks right or legitimate interest in the domain name in dispute by stating that the Respondent has never been known by the names <ford-credit.com> and <fordperformance.com>, that the use of the domain names in dispute as made by the Respondent is not legitimate non-commercial or fair use thereof.
The Complainant has never given a license nor in any way authorized Respondent to make use of any of the Complainant’s Trademarks. There is no evidence that Respondent has ever engaged is any legitimate business under the Complainant’s Trademarks. Furthermore there is evidence that Respondent’s action constitutes an attempt to extort money from Complainants and said Respondent is redirecting visitors to his website to unrelated websites, presumably generating profits from such activities.
The Panel finds that the Respondent has no rights or legitimate interest in respect of the domain names in dispute.
The second criterion has been met.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
It should be noted that the circumstances of bad faith are not limited to the above.
The domain names in dispute were registered in 2001 and 2002 subsequently to at least a century of use of the famous Trademark FORD and almost a decade after the commencement of continuous use of the Trademarks FORD CREDIT and FORD PERFORMANCE. Considering the fame associated with the Trademark FORD in the world, including in Italy, which evidence has not been challenged by the Respondent, it is inconceivable to this Panel that the Respondent was not aware of the existence and fame of at least the Trademark FORD. This does not come as an isolated instance when one observes the evidence adduced by the Complainants about the typo squatting attitude of the same Respondent as it has been found by panels in six earlier UDRP decisions cited by the Complainants. There is no connotation of good faith activity herein.
The Panel finds that the domain names in dispute have been registered in bad faith.
The Respondent pursuant to the written request of Complainants’ counsel in February 2006 to transfer the domain names in dispute asked for the transfer of the domain names in dispute sums of money in excess of the registration costs. The circumstances of this case are consistent with clear bad faith use of the said domain names and such demand by Respondent corroborates a pattern of such conduct when one considers for example the evidence in respect of the earlier dispute involving the Hertz Corporation at a time that it was a subsidiary of Complainant Ford Co along with 6 other instances put in evidence.
Further evidence of use of the said domain names in bad faith, the whole in accordance with jurisprudence cited by the Complainants, resides in the commercial links redirecting the visitors to the website of the Respondent to unrelated websites such as travel, business, finance, home, entertainment and life style categories of activities (exhibit J) to the Complaint. Finally the change of registrar from Dotster, Inc. in the United States of America to Tuonome.it.srl in Italy subsequent to the Complainants’ letter is additional evidence of use the bad faith attitude of the Respondent.
The Panel finds that the domain names in dispute have been registered in bad faith and used in bad faith.
The third criterion has been met.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names<ford-credit.com> and <fordperformance.com> be transferred to the Complainant Ford Motor Company.
J. Nelson Landry
Date: July 27, 2007