WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ford Motor Company v. Ignat, BuyThisDomain (icq 745770)
Case No. D2007-1326
1. The Parties
Complainant is Ford Motor Company, Michigan, United States of America, represented by Rouse & Co International, United Kingdom of Great Britain and Northern Ireland.
Respondent is Ignat, BuyThisDomain (icq 745770), Ryazan, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <fordkuga.com> (the “Domain Name”) is registered with EstDomains, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 5, 2007. On September 10, 2007, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name at issue. On September 11, 2007, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing his contact details. In response to a clarification request by the Center in respect of the language of the registration agreement for the Domain Name, on September 13, 2007 the Registrar confirmed that this language is English. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September 17, 2007. The Center verified that the Complaint, together with the amendment to 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 September 18, 2007. In accordance with the Rules, Paragraph 5(a), the due date for Response was October 8, 2007. On September 18, 2007, Respondent made the statements discussed in Section 6 below, and requested that the communication to him be sent in Russian. In response, on September 19, 2007, the Center notified Respondent that, pursuant to the Rules, Paragraph 11(a), the language of the administrative proceeding should be English. As Respondent did not submit a formal Response within the time limit and in compliance with the requirements of the Policy and the Rules, the Center notified the Respondent’s default on October 12, 2007.
The Center appointed Assen Alexiev as the sole panelist in this matter on October 25, 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.
Pursuant to Rules, Paragraph 11(a), the language of this administrative proceeding is English, being the language of the Domain Name Registration Agreement.
4. Factual Background
Complainant is the owner of the following registered trademarks:
- FORD word mark, reg. No. 157876, registered in the Russian Federation as of October 31, 2006 in Classes 7, 9, 11, 12, 37;
- FORD word mark, reg. No. 167175, registered in the Russian Federation as of August 28, 1998 in Class 39;
- FORD word mark, reg. No. 852 220, International registration, registered as of May 5, 2005 in Class 37;
- FORD word mark, reg. No. 849 957, International registration, registered as of May 5, 2005 in Class 36;
- FORD word mark, reg. No. 4527677, CTM registered as of July 3, 2006 in Class 36;
- KUGA word mark, reg. No. 2435635, registered in the United Kingdom as of April 6, 2007 in relation to motor land vehicles and parts and accessories therefore;
- KUGA word mark, reg. No. 556897, registered in Switzerland as of April 3, 2007 in Class 12; and
- KUGA word mark, reg. No. T07/07341E, registered in Singapore as of April 5, 2007 in Class 12.
Complainant’s domain name registrations incorporating the FORD mark include <ford.com> which was registered on August 31, 1988. Complainant and its subsidiaries are also the registered owners of many other domain names incorporating the FORD trademark, including inter alia <ford.ru>, <ford.co.uk>, <ford.com.au>, <ford.ca>, <ford.fr>, <ford.nl>, <ford.be>, <ford.es>, <ford.it>, <ford.ch>, <ford.pt>, <ford.gr>, <ford.se>,<ford.dk>, <ford.no>, <ford.fi>, <ford.co.jp>, <ford.co.nz>, <ford.co.th>, <ford.com.ph>, <ford.com.vn>, <ford.com.br>, <ford.com.ar> and <ford.cl>.
Complainant is also the registered owner of the domain name <fordkuga.co.uk>.
The Domain Name was registered by Respondent on July 21, 2007.
5. Parties’ Contentions
Complainant made the following contentions:
Complainant, Ford Motor Company, was incorporated in 1903, and is a manufacturer of motor vehicles. In 2005 and 2006, Complainant’s business had a turnover of $176.9 billion and $160.1 billion respectively, and total vehicle sales of 6,767,000 and 6,597,000 respectively. Ford Motor Company is now a multinational company trading internationally.
Complainant further states, that through its extensive use of and investment in the name FORD it has built up a valuable reputation and goodwill in the name which are proprietary rights belonging to Complainant. To the extent that Complainant’s franchises have also used and advertised themselves under the FORD trademarks, they have done so under license by and with the consent of Complainant.
Complainant is launching a new automotive vehicle called Ford Kuga across Europe in the spring of 2008. The Ford Kuga will be presented to the public and the press at the 2007 IAA Frankfurt Motor Show which opens on September 13, 2007.
On July 19, 2007, Complainant announced via a press release that it would be introducing the all-new Ford Kuga vehicle at the 2007 Frankfurt Auto Show, which begins on September 13, 2007. Complainant had planned to register the Domain Name, but Respondent managed to register it first, immediately after Complainant’s public announcement of its new Ford Kuga vehicle.
The Domain Name is comprised of identical signs to Complainant’s FORD and KUGA trademarks and as a whole is confusingly similar to both of these Trademarks.
According to Complainant, Respondent appears to be based in Russia. It is not an authorized licensee of Complainant, nor is it authorized to use the FORD or KUGA trademarks or in fact any of Complainant’s trademarks. By its very name ‘Buy This Domain’ Respondent appears to be a company whose very business is to buy and sell domain names.
To the best of Complainant’s belief, Respondent is not commonly known by the name “FORD”, “KUGA” or “FORD KUGA” and has no trademark or service mark rights in respect of the Domain Name or any corresponding name.
Complainant contends that Respondent’s registration and use of the Domain Name is so inherently likely to cause confusion among Internet users searching for the Complainant that it cannot constitute a bona fide offering of goods or services nor can it constitute a legitimate non-commercial or fair use of the Domain Name.
The FORD brand is an internationally well-known brand and so Complainant finds no legitimate reason why Respondent chose to acquire the Domain Name. On the contrary, by the time the Domain Name was acquired by Respondent - two days after Complainant’s announcement of its Ford Kuga vehicle, Respondent must have been aware of Complainant’s reputation for its promotion of motor vehicles under the FORD and KUGA trademarks and, due to the wording posted by Respondent on the Website at the Domain Name, must have known of Complainant’s future launch of the KUGA model under the FORD and KUGA Trademarks and must have suspected, if not actually verified by the availability of the public registers, that Complainant had registered trademark rights in FORD and KUGA. As such, Respondent has no rights or legitimate interest in the Domain Name.
Complainant further states that Respondent’s awareness of Complainant’s extensive reputation in the field of motor vehicles and Complainant’s related Trademark rights, especially the FORD and KUGA Trademarks, can be inferred from the website at the Domain Name which proves Respondent’s awareness of Complainant, its business and the upcoming launch of the new Ford Kuga.
Respondent’s very name ‘Buy This Domain’ clearly indicates that Respondent makes a profit by buying and selling domain names. Respondent has therefore registered the Domain Name with a view to selling, renting or otherwise transferring the Domain Name registration to Complainant or to one of its competitors for valuable consideration in excess of its out of pocket costs directly related to the Domain Name.
In the circumstances, Respondent’s primary purpose in registering the Domain Name, immediately after Complainant’s announcement of its Ford Kuga vehicle, was to prevent the Complainant from reflecting the FORD and KUGA Trademarks in a “.com” Domain Name pursuant to paragraph 4(b)(ii) and disrupting Complainant’s business by a competing website.
Complainant infers that, given the very high degree of similarity between the Domain Name and Complainant’s FORD and KUGA trademarks, Respondent is using the Domain Name to attract Internet users searching for Complainant’s goods and services on the Internet. As a result of this, traffic (likely to be potential customers) will be diverted away from Complainant.
The use of identical words to the FORD and KUGA trademarks in the Domain Name misrepresents to Internet users that the website hosted at the Domain Name, or services offered there, are in some way associated with Complainant or its goods and services are provided by Complainant when this is not the case, thus rendering consumer confusion inevitable. This added to the content posted on the Website is likely to confuse consumers into thinking that the Website is an official website owned by Complainant, affiliated to and/or endorsed by Complainant.
According to Complainant, Respondent’s use of the Domain Name shows an intention to attract, for commercial gain, internet users to the Website in an attempt to create a likelihood of confusion with Complainant’s FORD and KUGA Trademarks as to the source, sponsorship, affiliation of Respondent’s website.
Complainant submits that Respondent intentionally registered the Domain Name, immediately after Complainant’s announcement of its Ford Kuga vehicle and designed the Website in such a way as to attempt to free-ride on Complainant’s reputation by using the Domain Name to cause confusion and to attract Internet users and/or potential purchasers to the Website connected to the Domain Name.
Complainant requests that the Domain Name be transferred to it.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, Complainant must prove each of the following to justify the transfer of the Domain Name:
(i) That 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) That the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) That the Respondent has registered and is using the Domain Name in bad faith.
In this case, the Center has employed the required measures to achieve actual notice of the Complaint to Respondent, in compliance with Rules, Paragraph 2(a), and the Respondent was given a fair opportunity to present its case.
By Rules, Paragraph 5(b)(i), it is expected of a Respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…”
In the event of a default, under Rules, Paragraph (14)(b): “…the Panel shall draw such inferences therefrom as it considers appropriate.”
As stated by the Panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004: “Here, the potential evidence of good faith registration and use was in respondent’s control. Respondent’s failure to present any such evidence or to deny complainant’s allegations allows an inference that the evidence would not have been favorable to respondent.” As stated by the Panel in Viacom International Inc. v. Ir Suryani, WIPO Case No. D2001-1443: “Since the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, this Panel is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by the Complainant. In the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended for factual and legal conclusions as proven by such evidence.”
In this administrative proceeding, Respondent’s default entitles the Panel to conclude that Respondent has no arguments or evidence to rebut the assertions of Complainant. The Panel has to take its decision on the basis of the statements and documents submitted by Complainant and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.
A. Identical or Confusingly Similar
Complainant has provided evidence and has thus established its rights in the trademarks FORD and KUGA, registered in various countries. There is no doubt that the trademark FORD is famous, and that consumers around the globe associate it with automobiles produced by Complainant.
It is a common practice under the Policy to disregard the “.com” section of domain names for the purposes of the comparison under Policy, Paragraph 4(a)(i).
The Domain Name consists of the sequence “fordkuga”. Given the notoriety of the FORD trademark, Internet users would identify this sequence as a combination of two parts, namely “ford” and “kuga”. These two parts are respectively identical to the FORD and KUGA trademarks of Complainant, and their combination is confusingly similar to the same trademarks.
Therefore, the Panel finds that the Domain Name is confusingly similar to trademarks in which Complainant has rights. The first element of the test, required under the Policy, Paragraph (4)(a), is established.
B. Rights or Legitimate Interests
Complainant has contended that Respondent has no rights or legitimate interests in the Domain Name. It is not authorized by Complainant to use the FORD or KUGA trademarks, and is not commonly known by the name “Ford”, “Kuga” or “Ford Kuga”. The name “BuyThisDomain” infers that Respondent is primarily engaged in the business of buying and selling domain names.
Thus, Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name.
It is well established that once Complainant makes out a prima facie case under Policy, paragraph 4(a)(ii), the burden shifts to Respondent to rebut the showing by providing evidence of its rights or legitimate interests in the Domain Name.
Respondent, although given a fair opportunity to do so, has chosen not to present to the Panel any substantial arguments in its defense in accordance with the Rules, paragraph 5(b)(i) and 5(b)(ix), despite the consequences that the Panel may extract from the fact of a default (Rules, Paragraph 14). If Respondent had any legitimate reason for the registration or use of the disputed Domain Name, it could have brought it to the attention of the Panel. In particular, Respondent has failed to contend that any of the circumstances described in Policy, Paragraph 4(c), is present in his favor.
In his correspondence with the Center, Respondent has not brought forward any legitimate interest of its own in the Domain Name. Rather, Respondent chose only to express his surprise of the complaint and to state his belief that the information for Complainant’s new car model at Respondent’s website would be of interest to consumers, and that Complainant itself would welcome such a website. Respondent also declared its readiness to remove any content associated with Complainant from the website at the Domain Name.
The only other information available about Respondent is the Whois information, provided by the Registrar, and the content of the website, associated to the Domain Name.
The Whois information contains no evidence that Respondent is commonly known by the Domain Name. The registrant is listed as Ignat, BuyThisDomain (icq 745770). Such a record, by itself, is an indication that Respondent offers the Domain Name for sale.
Further, the website associated to the Domain Name contains only information about Complainant’s new car model – Ford Kuga, and no indications about any rights or legitimate interests of Respondent in the Domain Name.
Lastly, the readiness of Respondent to remove any content associated to Complainant from the website at the Domain name, further shows the lack of any genuine interests of Respondent in the Domain Name. If the website at the Domain Name, so confusingly similar to Complainant’s trademarks, contained nothing related to Complainant or its new car model, there is in the Panel’s view no conceivable reason for its existence.
Taken together, the evidence on the case supports the contentions of Complainant, and the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
The Domain Name is confusingly similar to Complainant’s trademarks, and was registered by Respondent immediately after the official announcement of Complainant’s new Ford Kuga vehicle.
The content of Respondent’s website and his correspondence to the Center clearly show Respondent’s awareness of Complainant’s goodwill and the expected interest of consumers in Complainant’s new product.
Respondent has no rights and legitimate interests in the Domain name, and registered it using the trade name BuyThisDomain, thus indirectly soliciting offers for the purchase of the Domain Name.
Such a combination of facts seems not accidental. Rather, it supports a finding that Respondent is intentionally attempting to attract Internet users to its website, by creating a likelihood of confusion with the complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website, and in doing this under the trade name BuyThisDomain, Respondent is attempting to induce offers for the purchase of the Domain Name by Complainant or other interested parties.
These facts support a finding of registration and use of the Domain Name in bad faith under the Policy. The third element of test under the Policy, Paragraph (4)(a), is therefore established.
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 <fordkuga.com> be transferred to Complainant.
Dated: November 9, 2007