WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Henry Ford Estate v. Moniker Privacy Services / Leon Georgiou

Case No. D2014-0446

1. The Parties

The Complainant is Henry Ford Estate of Detroit, Michigan, United States of America, represented by Bodman PLC, United States of America.

The Respondent is Moniker Privacy Services of Portland, Orlando, United States of America / Leon Georgiou of London, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <henryfordestate.com> (the “Domain Name”) is registered with Moniker Online Services, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 21, 2014. On March 24, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 26, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 2, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same date, the Center notified that the Complaint was administratively deficient. The Complainant filed amended Complaints on April 2, 2014 and April 3, 2014.

The Center verified that the Complaint together with the amended Complaint (hereafter the “Complaint”) satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 April 8, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 28, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default.

The Center appointed Nicholas Smith as the sole panelist in this matter on May 14, 2014. 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 non-profit corporation based in Michigan, United States that operates a property previously known as Fair Lane, which was the home of the industrialist Henry Ford and his wife, from 1915 to 1950. The property had for some years been owned by the University of Michigan. In 2010, the Complainant was formed in order to refurbish and re-organise the property to create historic site and museum at the property.

The Complainant does not own any registered trademarks but claims common law trademarks in the name “Henry Ford Estate” (the “HENRY FORD ESTATE” Mark) on the basis of the long-term use of the HENRY FORD ESTATE Mark by the Complainant and its predecessor as owner of Fair Lane, on the basis that the HENRY FORD ESTATE Mark has been used since the 1970s to describe the property, which is used as a museum, events center and a historic landmark. It maintains a website at the address “www.henryfordestate.org”.

The Domain Name <henryfordestate.com> was registered on November 22, 2011. The site is currently inactive, however prior to the commencement of the proceeding, the Domain Name resolved to a website (the “Respondent’s Website”) that made reference to the Henry Ford Estate, previously known as Fair Lane and its history. At one point the Respondent’s website also contained a reference to Weber barbecues and a link to a site where Weber barbecues could be purchased.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

(i) that the Domain Name is identical or confusingly similar to the Complainant’s HENRY FORD ESTATE Mark;

(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name has been registered and is being used in bad faith.

The Complainant is the owner of the HENRY FORD ESTATE Mark having acquired common law rights in the HENRY FORD ESTATE Mark by reason of the continued use and advertising of the HENRY FORD ESTATE Mark to describe the Fair Lane property and the assorted services (museum, catering, events center) offered by the Complainant on the property. The Domain Name is identical to the HENRY FORD ESTATE Mark.

The Respondent has no rights or legitimate interests in the Domain Name. The Respondent is not affiliated with the Complainant in any way. The Complainant has not authorized the Respondent to use and register the HENRY FORD ESTATE Mark or to seek the registration of any domain name incorporating the HENRY FORD ESTATE Mark. The Respondent’s Website is a commercial site which includes a photo that was copied, without the Complainant’s permission, from the Complainant’s website at “www.henryfordestate.org”. The use of the Domain Name in this manner does not confer a right or legitimate interest on the Respondent.

The Domain Name was registered and is being used in bad faith. The Respondent is using the Domain Name to operate a commercial website that passes itself off as the official Henry Ford Estate website, and does so through the use of a picture of the Fair Lane property copied of the Complainant’s Website. It is intentionally attempting to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Website or location or of a product or service on the Respondent’s Website or location.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

To prove this element, the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.

The Complainant does not claim to have any registered trademarks for the HENRY FORD ESTATE Mark but claims common law rights arising out of the use of the HENRY FORD ESTATE Mark by the Complainant and its predecessor to describe the Fair Lane property and the assorted services provided by the Complainant at the property (museum, catering, events center).

The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0” at paragraph 1.7) states that in order to show common law rights in a trade mark:

“The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such ‘secondary meaning’ includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant's rights in a common law trademark. For a number of reasons, including the nature of the Internet, the availability of trademark-like protection under passing-off laws, and considerations of parity, unregistered rights can arise for the purposes of the UDRP even when the complainant is based in a civil law jurisdiction. However, a conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required. Some panels have also noted that in cases involving claimed common law or unregistered trademarks that are comprised of descriptive or dictionary words, and therefore not inherently distinctive, there may be a greater onus on the complainant to present compelling evidence of secondary meaning or distinctiveness. Some panels have noted that the more obvious the viability of a complainant's claim to common law or unregistered trademark rights, the less onus there tends to be on that complainant to present the panel with extensive supporting evidence. However, unless such status is objectively clear, panels will be unlikely to take bald claims of trademark fame for granted.”

The evidence in the Complaint is that the HENRY FORD ESTATE Mark is a mark that has become associated with the Complainant and its role in supplying the services of a museum and venue from the property that is known as the Henry Ford Estate. In particular, the evidence in the Complaint shows that the Complainant, in its role as the operator of the Henry Ford Estate, receives over 100,000 visitors per year and that the Henry Ford Estate is well-known in the community through the Complainant’s website and other marketing conducted by the Complainant and its predecessor to raise the profile of Fair Lane. Ultimately, the Panel is satisfied that, because of the use of the HENRY FORD ESTATE Mark, the name has become a distinctive identifier of the Complainant and its services. The Complainant has rights in the HENRY FORD ESTATE Mark.

The Domain Name is identical to the HENRY FORD ESTATE Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

To succeed on this element, a complainant must make out a prima facie case that a respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.

Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:

“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

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

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. (Policy, paragraph 4(c))”.

The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the HENRY FORD ESTATE Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial use as the Respondent is not currently using the Domain Name. Rather the Respondent appears to have used the Domain Name for a website that passes itself off as the official website of the Complainant and contains a link to a third party site, for which the Respondent may receive revenue. Such use does not, in itself, grant the Respondent rights or legitimate interests in the Domain Name.

The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has had an opportunity to rebut the presumption that it lacks rights or legitimate interests but has chosen not to do so. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith:

(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registrations to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or

(ii) the Respondent has registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.

The Panel finds that it is likely that the Respondent was aware of the Complainant and its reputation in the HENRY FORD ESTATE Mark at the time the Domain Name was registered. The Respondent’s Website makes reference to the Henry Ford Estate at Fair Lane and contains a photo copied from the Complainant’s Website, indicating a familiarity with the Complainant and its Mark.

The registration of the Domain Name in awareness of the Complainant’s HENRY FORD ESTATE Mark and in the absence of rights or legitimate interests amounts to registration in bad faith.

The Domain Name is currently inactive, but prior to the commencement of the proceedings the Respondent operated a website from the Domain Name that passed itself off as the official website of the Henry Ford Estate at Fair Lane. The Respondent’s Website contained at least one commercial link for which the Respondent presumably received profit. In the absence of any alternative explanation for the Respondent’s conduct, the Panel concludes that by using the Domain Name, the Respondent intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. On this basis the Panel is prepared to conclude that the Respondent is using the Domain Name in bad faith.

Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <henryfordestate.com> be transferred to the Complainant.

Nicholas Smith
Sole Panelist
Date: May 21, 2014