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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Ford Motor Company of Australia Ltd. / Ford Motor Company of Canada, Ltd. / Ford Motor Company v. E.K.W. Auto Parts Recyclers Pty. Ltd., Munum Pty Ltd / Fordparts Recyclers Pty. Ltd.

Case No. DAU2018-0034

1. The Parties

The Complainant is Ford Motor Company of Australia Ltd. of Richmond, Victoria, Australia / Ford Motor Company of Canada, Ltd. of Oakville, Ontario, Canada / Ford Motor Company of Dearborn, Michigan, United States of America (“United States”), represented by Phillips Ryther & Winchester, United States.

The Respondent is E.K.W. Auto Parts Recyclers Pty. Ltd., Munum Pty Ltd / Fordparts Recyclers Pty. Ltd. of Maidstone and East Keilor, Victoria, Australia.

2. The Domain Names and Registrar

The disputed domain names <fordautoparts.com.au>, <fordpart.com.au>, and <fordparts.net.au> are registered with AussieHQ Pty Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 26, 2018. On November 27, 2018, the Center transmitted by email to AussieHQ Pty Ltd a request for registrar verification in connection with the disputed domain names. On December 12, 2018, AussieHQ Pty Ltd transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 17, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on December 19, 2018.

The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy” or “.auDRP”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au 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 proceeding commenced on December 20, 2018. In accordance with the Rules, paragraph 5(a), the due date for Response was January 9, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 10, 2019.

The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on January 21, 2019. 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

A. Complainant

The First Complainant is an Australian corporation; the Second Complainant is a Canadian corporation; and the Third Complainant is a publicly traded United States corporation. Both the First Complainant and the Second Complainant are wholly owned subsidiaries of the Third Complainant.

The Complainants have used the trade mark FORD (the “Trade Mark”) in connection with automobiles, automobile parts and services.

The Second Complainant is the owner of numerous registrations in Australia for the Trade Mark, including registration No. 196928, registered on November 22, 1949.

The First Complainant uses the Trade Mark under licence from the Second Complainant and the Third Complainant.

B. Respondent

The First Respondent is an individual trading as E.K.W. Auto Recyclers apparently with an address in Maidstone and East Keilor, Victoria, Australia.

The Second Respondent is a company incorporated in the state of Victoria, Australia.

C. The Disputed Domain Names

The disputed domain name <fordautoparts.com.au> was registered on June 1, 2006 by the Second Respondent.

The disputed domain name <fordpart.com.au> was registered on June 8, 2006 by the First Respondent.

The disputed domain name <fordparts.net.au> was registered on June 19, 2007 by the First Respondent.

D. The Websites at the Disputed Domain Names

The disputed domain name <fordautoparts.com.au> resolves to a website promoting a business with the name of “Ford Auto Parts” providing new and used Ford parts, copy parts, and wrecking of late model Ford automobiles.

The disputed domain name <fordpart.com.au> resolves to a website that displays pay-per-click advertisements related to the Trade Mark. Previously, the disputed domain name <fordpart.com.au> resolved to a website promoting a business with the name of “FordParts Recyclers” providing new and used Ford parts, copy parts, and wrecking of Ford trucks and four wheel drives.

The disputed domain name <fordparts.net.au> is currently not used by the Respondent. Previously, <fordparts.net.au> resolved to a website promoting a business with the name of “FordParts Recyclers” and providing new and used Ford parts, copy parts, and wrecking of Ford automobiles.

5. Parties’ Contentions

A. Complainants

The Complainants contend that the disputed domain names are identical or confusingly similar to the Trade Mark; the Respondents have no rights or legitimate interests in respect of the disputed domain names; and the disputed domain names have been registered or subsequently used in bad faith.

B. Respondents

The Respondents did not reply to the Complainants’ contentions.

6. Discussion and Findings

6.1 Consolidation of Complainants

Previous UDRP and auDRP decisions suggest that a complaint may be brought by multiple complainants where (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion; and (ii) it would be equitable and procedurally efficient to permit the consolidation (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.1). See also auDA Overview of Panel Views on Selected auDRP Questions, First Edition (“auDA auDRP Overview 1.0”), section 4.16(i).

The Panel finds that the Complainants have common legal and business interest in the Trade Mark. The Complainants have common grievances against the Respondents and the Respondents have engaged in common conduct that has affected the Complainants’ rights in a similar fashion.

The Panel also finds that it would be procedurally efficient and equitable to all the Parties for the Complainants to be consolidated.

In all the circumstances, the Panel therefore determines that there be consolidation of the Complainants in this proceeding.

6.2 Consolidation of Respondents

Previous UDRP decisions suggest that consolidation of multiple respondents may be appropriate, where the particular circumstances of a given case indicate that common control is being exercised over the disputed domain names or the websites to which the disputed domain names resolve, where consolidation would be fair and equitable to all parties, and where procedural efficiency supports consolidation (see WIPO Overview 3.0, section 4.11.2).

In the present proceeding, the Complainants contend as follows:

(i) The Second Respondent’s name, “Fordparts Recyclers”, is an infringing name that the First Respondent has used to conduct business in connection with <fordpart.com.au>.

(ii) The Second Respondent’s name, “Fordparts Recyclers Pty Ltd”, was shown on the <fordpart.com.au> home page for a period of time.

(iii) The First Respondent is the director of the Second Respondent.

The Panel notes that the Registrant Contact Email, Tech Contact Email and Tech Contact Name for each of the disputed domain names is the same. The Tech Contact Name for each of the disputed domain names is the First Respondent

According to auDA auDRP Overview 1.0, section 4.16(ii), the position under the auDRP regarding consolidation of respondents is uncertain. This is because paragraph 3(c) of the Rules provides that a complaint may relate to more than one domain name, provided they are registered by the same owner.

In all the circumstances, the Panel concludes that common control is being exercised over the disputed domain names. The Panel also finds that the close interrelationship between the Respondents, including in particular the fact the Tech Contact Name for each of the disputed domain names is associated with the First Respondent, supports the conclusion that the disputed domain names are de facto, if not de jure, registered by the same owner.

The Panel therefore determines, in the circumstances, that there be consolidation of Respondents in this proceeding.

6.3 Substantive Elements of the Policy

A. Identical or Confusingly Similar

The Panel finds that the Complainants have rights in the Trade Mark acquired through use and registration.

All three of the disputed domain names wholly incorporate the Trade Mark, together with the non-distinctive and descriptive words “part”, “parts”, or “auto parts”.

The Panel finds that the disputed domain names are confusingly similar to the Trade Mark.

Accordingly, the Complainants have fulfilled the first condition of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that the respondent has rights or legitimate interests in a disputed domain name:

(i) before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services;

(ii) the respondent (as an individual, business, or other organisation) has been commonly known by the disputed domain name even if the respondent has acquired trade mark or service rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

There is no evidence that the Complainants have authorised, licensed, or permitted the Respondents to register or use the disputed domain names or to use the Trade Mark. The Complainants have prior rights in the Trade Mark which precede the Respondents’ registration of the disputed domain names by many years. The Panel finds on the record that there is therefore a prima facie case that the Respondents have no rights or legitimate interests in the disputed domain names, and the burden is thus on the Respondents to produce evidence to rebut this presumption.

While the Respondents have used the disputed domain names to sell new and used Ford parts, the Respondents are not authorised resellers of Ford parts. In the past, auDRP panels have applied the Oki Data criteria as the minimum requirements to be satisfied before an unauthorised reseller’s use of a domain name can be held to constitute a bona fide offering of goods or services under the Policy (see Oki Data Americas, Inc. v ASD, Inc., WIPO Case No. D2001-0903). To establish whether the Respondents have a legitimate interest in the disputed domain names, at a minimum, all four of the Oki Data criteria must be satisfied:

(i) the respondent must actually be offering the goods or services at issue;

(ii) the respondent must offer only those goods or services in connection with the disputed domain name;

(iii) the respondent must accurately disclose its true relationship with the trademark owner prior to notice of the dispute; and

(iv) the respondent must not have attempted to “corner the market” in all relevant domain names that reflect the trade mark.

The Panel finds that, while the Respondents satisfy the first Oki Data criterion, they fail to satisfy the remaining criteria. The Respondents have also used the disputed domain names to promote the sale of used or reconditioned Ford parts, copy parts not made by Ford, and the Respondents’ wrecking services. The Respondents have not disclosed their true relationship with the Complainants, and refer to themselves as “Ford Auto Parts”. The panel further finds that the Respondents have attempted to corner the market by registering multiple domain name variants of “Ford Parts” to divert customers seeking FORD parts to the Respondents’ websites as opposed to the websites of the Complainants or of their authorised dealers.

There has been no evidence adduced to show that the Respondents have been commonly known by the disputed domain names.

There has been no evidence adduced to show that the Respondents are making a legitimate noncommercial or fair use of the disputed domain names. Additionally, the panel finds that the Respondents’ subsequent use of <fordpart.com.au> to display pay-per-click advertisements is similarly illegitimate (see auDA auDRP Overview 1.0, section 2.6).

The Panel finds that the Respondents have failed to produce any evidence to establish genuine rights or legitimate interests in the disputed domain names (see Tinder, Inc. v. GhostMonitor, Inc., Registration Private, c/o/ Domains by Proxy, LLC / Peter Bodnar, WIPO Case No. D2017-1212 (“the circumstances where an entity adopts a domain name because of its associations with a trade mark or another and can then demonstrate that, notwithstanding that association, the domain name has by reason of its use become independently ‘commonly known’ by that name, are likely to be very rare. Merely adopting the domain name as the name of business would be far form sufficient”)).

Accordingly, the Complainants have fulfilled the second condition of paragraph 4(a) of the Policy.

C. Registered or Used in Bad Faith

In light of the factors highlighted in section B above, the Panel finds that the disputed domains were registered in bad faith.

In all the circumstances, the Panel finds it is inconceivable the Respondents were not aware of the Complainants and of the Complainants’ Trade Mark when the Respondents registered the disputed domain names.

Accordingly, the Complainants have fulfilled the third condition of paragraph 4(a) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraph 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <fordautoparts.com.au>, <fordpart.com.au>, and <fordparts.net.au> be transferred to the First Complainant, an Australian corporation and therefore an entity which apparently satisfies the auDA eligibility rules.

Sebastian M.W. Hughes
Sole Panelist
Date: February 4, 2019

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