WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Ford Foundation v. MD Baharul Islam
Case No. D2014-1616
1. The Parties
The Complainant is The Ford Foundation of New York, United States of America, represented by Davis Wright Tremaine LLP, United States of America.
The Respondent is MD Baharul Islam of Guwahati Assam, India.
2. The Domain Name and Registrar
The disputed domain name <fordfoundationindia.org> is registered with eNom (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 18, 2014. On September 19, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 19, 2014, the Registrar transmitted by email to the Center its verification response confirming:
(a) it is the Registrar for the disputed domain name;
(b) the disputed domain name is registered in the name of the Respondent and the contact details are correct;
(c) the Respondent registered the disputed domain name on June 17, 2014;
(d) the disputed domain name was registered subject to the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), and the UDRP applies to the disputed domain name.
The Center verified that the Complaint satisfied the formal requirements of 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 24, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 14, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 15, 2014.
The Center appointed Warwick A. Rothnie, as the sole panelist in this matter on October 20, 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 charitable organization which first commenced operation in 1936. It was founded by Edsel Ford, but is no longer connected with the Ford Motor Company. In 2011, it reported assets of USD 10 billion and over USD 400 million in grants. It claims to be the second largest private charitable organization in the world. It provides its social and educational services through a network of offices and establishments throughout the world.
It has been operating in India since 1952, and currently has offices in Nepal and Sri Lanka as well.
Amongst other things, it has registered trademarks in the United States of America for FORD FOUNDATION: Nos 2,930,114; 2,930,115; and 4,340,720. The first two trademarks were registered on March 8, 2005 in International Classes 16 and 36; the third trademark was registered on May 28, 2013 in International Class 35.
As noted above, the disputed domain name was registered on June 17, 2014; that is, well after the Complainant commenced operations in both the United States of America and India and well after the Complainant registered its trademarks.
The disputed domain name did resolve to a website, but has since been disabled by the registrar. Before it was disabled, the website which the disputed domain name resolved to was headed "Ford Foundation India – A Registered Public Charitable Trust". According to the website, Ford Foundation India ("FFI") is a voluntary not-for-profit organization committed to the struggle against illiteracy, poor health, environmental degradation and disastrous situations, primarily in North Eastern India. The website also claimed that FFI had some form of association with Aszad Educational Trust, which also claims to be a public registered charitable trust.
5. Discussion and Findings
No response has been filed. The Complaint and Written Notice have been served, however, on the physical and electronic coordinates, respectively, specified in the WhoIs record (and confirmed as correct by the Registrar) in accordance with paragraph 2(a) and 4(a) of the Rules. Accordingly, the Panel finds that the Complaint has been properly served on the Respondent.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate that:
(i) the disputed domain name 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 interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical, or confusingly similar, to the Complainant's trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the three registered trademark for FORD FOUNDATION referred to above. As the Complainant points out, two prior UDRP panels have found that the Complainant's trademark has significant common law reputation: The Ford Foundation v. Chen, WIPO Case No. D2007‑0862 and The Ford Foundation v. Technology Services Ltd. / de Oliveira, WIPO Case No. D2007-1711. While the Panel is not bound by prior decisions, it will respect their approach in the interests of consistency and predictability unless some aspect of the record in the instant case compels a different conclusion.
On the question of identity or confusing similarity, what is required is simply a comparison and assessment of the disputed domain name itself to the Complainant's proved trademarks: see for example, Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin, WIPO Case No. D2002-0420. This is different to the question under trademark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
In the present case, the disputed domain name consists of the Complainant's registered trademark plus the word "India" and the generic Top-Level Domain ("gTLD") ".org". It is permissible in the present circumstances to disregard the gTLD ".com" component of the disputed domain name as a functional aspect of the domain name system: Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046; Ticketmaster Corporation v. DiscoverNet Inc., WIPO Case No. D2001-0252. The addition of a geographic term like India to the Complainant's trademark does not distinguish the disputed domain name from the trademark. Rather, it suggests an "Indian" arm or connection to the Complainant.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant's trademarks and the requirement under the first limb of the Policy is satisfied.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which 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; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark 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 trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. UDRP panels have recognized the difficulties inherent in disproving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it. The disputed domain name is plainly not derived from the Respondent's name. From the available record, the Respondent does not appear to hold any trademarks for the disputed domain name.
The Complainant points to the statement on the website which the disputed domain name resolved to asserting that FFI is a "public registered trust". According to the materials submitted with the Complaint, however, there is no registration in the Indian state of Assam or elsewhere for FFI as a charitable trust. The Complainant then alleges that FFI is engaged in some sort of fraud to obtain donations from the public by misleading or deceiving the public into thinking FFI is the Complainant or its Indian arm and having the additional sanction of being publicly registered.
The Panel notes that the Complainant has been operating under its name in India since 1952, very much in the fields of activity that FFI's website claimed it was operating in. "Ford Foundation" does not have any descriptive significance in connection with the charitable services FFI claims to be providing. Its significance in relation to such services arises because its trademark significance denoting a connection with the Complainant. Use of another's trademark in a domain name in such circumstances does not constitute a bona fide use under the Policy without some supervening right or interest. In these circumstances, the Panel finds that the Complainant has raised a strong prima facie case that the Respondent does not have rights or a legitimate interest in the disputed domain name. In the absence of a compelling explanation from the Respondent about how the name FFI came to be adopted and the basis for its use, that prima facie case has not been rebutted.
Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.
C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
On the record in this case, it appears plain that the Respondent was well aware of the Complainant's name and trademark before it registered the disputed domain name. As already noted, the name does not appear to have any connection with the Respondent such as its own name and it is not descriptive of charitable services. The adoption and use of the trademark in the disputed domain name and for the entity promoted by the website (before the Registrar disabled it) bespeaks awareness of the Complainant's activities under its trademark and, in the absence of some colour of right, an intention to take advantage of it in connection with the field it is so closely connected with. Accordingly, the Panel finds that the Respondent registered the disputed domain name in bad faith and, by using it in the manner indicated, has been using it in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <fordfoundationindia.org> be transferred to the Complainant.
Warwick A Rothnie
Date: November 4, 2014