WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Ford Foundation v. Chen Bao Shui
Case No. D2007-0862
1. The Parties
The Complainant is The Ford Foundation, of New York, New York, United States of America, represented by Davis Wright Tremaine LLP, United States of America.
The Respondent is Chen Bao Shui of Shanghai, China.
2. The Domain Name and Registrar
The disputed domain name <fordfoundation.com> is registered with eNom, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 12, 2007. On June 13, 2007, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On June 14, 2007, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that 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”).
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 26, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was July 16, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 17, 2007.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on July 24, 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.
4. Factual Background
The Complainant is a charitable organization chartered in 1936 by Edsel Ford and executives of the Ford Motor Company. It administers a worldwide network of social and educational services through offices located in thirteen countries. In the year ending September 2006, the Complainant distributed nearly $600 million ( $U.S.) in grants and program support.
The Complainant is the owner of United States trademark registration Nos. 2930114 and 2930115 for FORD FOUNDATION registered in connection with making grants and loans in the fields of education, media, arts and culture, community development, environmental issues, human rights, peace and social justice; and publications, namely brochures, newsletters and reports in those fields. The FORD FOUNDATION trademarks were filed on April 23, 2003, and issued to registration on March 8, 2005.
The Complainant is also the owner of United States trademark registration No. 3106166 for FORD FOUNDATION INTERNATIONAL FELLOWSHIP PROGRAM, registered for use in connection with the administration and provision of scholarships for graduate level educational programs. The application was filed on December 10, 2004 and issued to registration on June 20, 2006.
The Respondent registered the domain name <fordfoundation.com> on or about May 25, 2007. The Respondent operates a click-through website that provides links to third party websites including links to other non-profit organizations, grants, donations, and scholarships sites including a link to the Complainant’s website.
On May 30, 2007, the Complainant sent a cease and desist letter to the Respondent demanding the Respondent cease use of its trademarks and the disputed domain name <fordfoundation.com>. The Respondent replied on May 30, 2007, requesting information on which Chinese law was alleged to be violated. The Complainant sent an email response explaining that the Respondent was required to comply with the ICANN Policy by virtue of the Enom domain name registration. The Complainant received no further response from the Respondent before filing its Complaint with the Center.
5. Parties’ Contentions
Identical or Confusingly Similar
The Complainant contends that the domain name <fordfoundation.com> is identical or confusingly similar to its FORD FOUNDATION trademarks.
Rights or Legitimate Interests
The Complainant submit that the Respondent has no rights or legitimate interest in respect of the disputed domain name because (1) Respondent registered the domain name approximately 70 years after the Complainant adopted and began use of the FORD FOUNDANTION trademarks; (2) the Respondent has not been commonly known by the domain name; (3) the Respondent is not authorized to use the FORD FOUNDATION marks; (4) the disputed domain name resolves to a website that links to third party commercial websites; (5) the Respondent’s use of the Complainant’s trademarks to divert consumers to third party websites is not a bona fide offering of goods and services; (6) the Respondent has not satisfactorily responded to the Complainant’s cease and desist letters; (7) Complainant’s marks are so well known that Respondent must have been aware of the marks at the time the domain name was registered; and (8) the Respondent can not present a fair use or noncommercial use of domain name.
Registered and Used in Bad Faith
The Complainant contends that the Respondent registered and is using the domain name in bad faith as (1) the Complainant’s marks are famous and consequently, the Respondent was undoubtedly aware of the FORD FOUNDATION marks prior to the registration of the disputed domain name; (2) registering a domain name obviously connected with the Complainant suggests, if not establishes, opportunistic bad faith (3) in registering the domain name the Respondent is seeking to exploit user confusion by diverting Internet users away from the legitimate Ford Foundation website for the Respondent’s commercial gain; (4) the Respondent is diverting users in a misleading manner; and (5) the Respondent failed to respond satisfactorily to cease and desist letters sent by Complainant.
The Respondent did not formally reply to the Complainant’s contentions. Nevertheless, on June 13, 2007, the Complainant copied the Center an email apparently sent by the Respondent. The Respondent’s email contained only irrelevant remarks against counsel for Complainant.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests 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
The Panel finds that the Complainant has established rights in the FORD FOUNDATION trademarks by virtue of its U.S. trademark registrations Nos. 2930114, 2930115, and 3106166.
The Panel finds that the <fordfoundation.com> domain is identical to the Complainant’s FORD FOUNDATION trademarks, as the domain consists of the Complainant’s trademark with the addition of a generic top-level domain, which is not significant for the purpose of determining whether the disputed domain name is identical or confusingly similar (Rollerblade, Inc. v. McCrady, WIPO Case No. D2000-0429).
The Panel, therefore, finds that the Complainant has satisfied the first requirement of
paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Panel finds no evidence that the Respondent has any legitimate interest or right in
the disputed domain name. The Respondent does not appear to have been known by the disputed domain name and is not using the domain name in connection with a bona fide offering of goods of services. The Panel finds that the Respondent’s domain name provides links to goods and services, which include other non-profit organizations that appear to offer services similar to those of the Complainant, through a “click-through” website. Prior panels have decided that the use of confusingly similar domain names in connection with a “click-through” scheme does not serve to establish a bona fide offering of goods and services (The Evening Store v. Henry Chan, WIPO Case No. D2004-0305; and Lilly ICOS LLC v. Saban Mihailovic, WIPO Case No. D2005-0356).
The Panel also accepts that the Complainant has never authorized the Respondent to use its FORD FOUNDATION trademarks.
The Panel is therefore, satisfied that the Complainant has made a prima facie showing of the Respondent’s lack of rights or legitimate interest in the disputed domain name. It is well established that once a Complainant has made a prima facie showing, the Respondent must come forward with evidence that rebuts this presumption (Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270).
As the Respondent has not filed any evidence in response, the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The Panel is satisfied that the evidence shows the Complaint’s FORD FOUNDATION trademark is widely known and has been widely used in connection with charitable grants and loans since approximately 1936. In light of these facts, the Panel is prepared to infer that the Respondent had actual knowledge of the Complainant’s trademark rights when it registered the domain name <fordfoundation.com>.
The Panel is also prepared to find that the Respondent registered the domain and is using it in association with the operation of a “click-through” website for the purposes of commercial gain by providing links to third party sites that appear to offer the similar charitable related services as the Complainant. By adopting the Complainant’s FORD FOUNDATION trademark in the disputed domain name the Respondent has deliberately traded on the goodwill and reputation of the Complainant, by diverting Internet users intended for the Complainant’s website to the Respondent’s website. Prior panel decisions have consistently recognized that, under similar circumstances, the registration of domain names which are then used to operate “click-through” sites, can be considered evidence of bad faith (CareerBuilder, LLC v Names for Sale, WIPO Case No. D2005-0186 and Air Austral v. WWW Enterprises, Inc., WIPO Case No. D2004-0765). In the circumstances, the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith.
For these reasons, the Panel finds that the Complainant has satisfied the third requirement of paragraph 4(a) of the Policy.
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 name, <fordfoundation.com> be transferred to the Complainant.
Christopher J. Pibus
Dated: August 7, 2007