WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Ford Motor Company v. Chu Truong Giang

Case No. D2017-0979

1. The Parties

The Complainant is Ford Motor Company of Dearborn, Michigan, United States of America, represented by T&G Law Firm LLC, Viet Nam.

The Respondent is Chu Truong Giang of Hanoi, Viet Nam.

. The Domain Name and Registrar

The disputed domain name <fordhungvuong.com> (the "Disputed Domain Name") is registered with P.A. Viet Nam Company Limited (the "Registrar").

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on May 17, 2017. On May 17, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 23, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 24, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On May 24, 2017, the Center transmitted an email in English and Vietnamese to the Parties regarding the language of the proceeding. The Complainant filed an amended Complaint and requested that English be the language of the proceeding on May 29, 2017. The Respondent did not comment on the language of the proceeding by the specified due date.

The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint in English and Vietnamese, and the proceedings commenced on June 1, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 21, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 22, 2017.

The Center appointed Pham Nghiem Xuan Bac as the sole panelist in this matter on June 26, 2017. 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 Ford Motor Company is a global automotive and mobility company, incorporated in 1903.

The Complainant is one of the largest automobile manufacturers in the world. The Complainant is also known for its core business, including but not limited to, designing, manufacturing, financing and servicing a full line of cars, trucks, SUVs, and electrified vehicles, as well as Lincoln luxury vehicles.

The Complainant is the owner of the trademarks FORD, FORD (figurative) and FORD GO FURTHER in a number of jurisdictions, including Viet Nam where the Respondent is located. In Viet Nam, the Complainant owns a number of FORD trademarks in word and figurative form, including but not limited to: Vietnamese trademark registration No. 4631 registered on September 24, 1992; No. 10226 registered on March 20, 1993; No. 4-0026714-000 registered on March 28, 1998; No. 4-0140359-000 registered on January 11, 2010; No. 4-0139039-000 registered on December 17, 2009; No. 4-0205313-000 and No. 4-0205314-000 registered on May 9, 2013.

The Respondent registered the Disputed Domain Name on December 11, 2016.

At the time of the Decision, the website under the Disputed Domain Name is under operation for sale and purchase of automobiles bearing the brand of the Complainant.

5. Parties' Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:

(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant contends that the Complainant is and has been for many years the right holder of the trademark FORD in numerous jurisdictions worldwide, including in Viet Nam. The Complainant also refers to two cases including Ford Motor Company v. Daniel Strbik and Host Master, WIPO Case No. D2013-1499 and Ford Motor Company v. Ignat, BuythisDomain (icq 745770), WIPO Case No. D2007-1326 in order to prove that FORD trademark is a well-known trademark.

The Complainant further contends that the Disputed Domain Name is confusingly similar to the Complainant's trademark, as it comprises the word "ford" which is the Complainant's FORD trademark and the addition of the generic Vietnamese words "hungvuong" (which is the name of the street) does not materially change the confusingly similar conclusion.

Finally, the Complainant submits that the addition of the generic Top-Level Domain ("gTLD") ".com" in the Disputed Domain Name does not add any distinctiveness to the Disputed Domain Name.

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name

The Complainant contends that the Respondent is not entitled to use the Complainant's FORD trademark as there is no evidence that the Complainant authorized or otherwise permitted the Respondent to register the Disputed Domain Name. The Complainant asserts that it has thereby made out a prima face case so far as lack of rights or legitimate interests is concerned and that the burden of production shifts to the Respondent in this respect.

The Complainant also submits that the Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Disputed Domain Name without intending to mislead and divert consumers or to tarnish the famous FORD trademark for commercial gain by using the Disputed Domain Name to sell/advertise Ford automobiles. In addition, the Complainant claims that the Respondent appears to directly take advantage of the goodwill of the Complainant and its famous trademark without the consent of the Complainant.

The Complainant further contends that the Respondent prominently features the Complainant's well-known trademark and logos on the website under the Disputed Domain Name shows that the Respondent is using the Disputed Domain Name to infringe the Complainant's right, which cannot give rise to a legitimate right or interest on the part of the Respondent.

Finally, the Complainant submits that there is no evidence that the Respondent is commonly known by the Disputed Domain Name.

(iii) The Disputed Domain Name was registered and is being used in bad faith.

The Complainant contends that the Respondent has registered and currently uses the Disputed Domain Name in bad faith with regard to the Complainant's right to the well-known trademark FORD.

The Complainant further contends that by displaying the FORD trademark and logos on the website's appearance, the Respondent was fully aware of FORD trademark when registering the Disputed Domain Name. In addition, the Respondent clearly registered the Disputed Domain Name in bad faith, which confuses customers into believing that the website under the Disputed Domain Name is authorized or endorsed by the Complainant.

Moreover, the Complainant argues that (i) the Respondent deliberately created confusion about its relationship with the Complainant by prominently featuring the Complainant's FORD mark on the Disputed Domain Name and falsely indicating that the Complainant endorses the Respondent's site; and (ii) in the website under the Disputed Domain Name, the Respondent inserts a link to website "www.andoford.com", which directs the Internet traffic to other website advertising FORD automobiles, which is operated and managed by An Do Ford Showroom. Such misleading behavior, in addition to the fact that the Respondent has no rights of legitimate interests in the Disputed Domain Name is indicative of bad faith use on the part of the Respondent.

Finally, the Complainant submits that by using the Disputed Domain Name, the Respondent attempted to intentionally attract for commercial gain Internet users to its website by creating the likelihood of confusion with the Complainant's mark and disrupting the business of the Complainant.

In view of all the above, the Complainant requests the Panel to order the Disputed Domain Name be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

A. Procedural Issues

(i) Respondent's identity

The Panel notes that the present case involves privacy and/or proxy registration service. At the time the Complaint was filed on May 17, 2017, the Respondent was identified as "Domain Admin" (Using Whois Protection Service), the Registrant of the Disputed Domain Name. On May 23, 2017, the Registrar revealed that the underlying Registrant as "Chu Truong Giang" of Hanoi, Viet Nam according to WhoIs information.

On May 29, 2017, the Complainant filed an amended Complaint, replacing the Respondent named in the initial Complaint by the underlying Registrant, and submitted further evidence concerning the newly-identified Respondent.

Therefore, in accordance with the views noted in section 4.4 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), the Panel determines the identity of the proper Respondent, in this case, be the disclosed underlying Registrant as named in the amended Complaint filed on May 29, 2017.

(ii) Language of the Proceeding

The Complaint was filed in English. However, the Registrar confirmed on May 23, 2017 that the language of the Registration Agreement used was Vietnamese.

As the Complaint was filed in English, the Center, in its notification dated May 24, 2017 in English and Vietnamese, invited the Complainant to submit either (i) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceeding should be in English, or (ii) a translation of the Complaint in Vietnamese, or (iii) a substantiated request for English to be the language of the proceeding. On May 29, 2017, the Complainant submitted its request that English be the language of the proceeding. The Respondent did not submit any comment in relation to the language of the proceeding.

According to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.

Similar to previous UDRP decisions, the Panel finds that the spirit of paragraph 11(a) is to ensure fairness in the selection of language by giving full consideration to the Parties' level of comfortability with each language, the expenses to be incurred and possibility of delay in the proceeding in the event translations are required and other relevant factors (see, e.g., Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679).

In the present case, the Panel takes into account the circumstances of the proceeding, including, but not limited to:

(i) the nationality of the Parties;

(ii) the fact that the Complainant, an entity in the United State of America, does not appear to be able to communicate in Vietnamese; and

(iii) the English language is quite popular in Viet Nam, where the Respondent is located, making it likely to be understandable to the Respondent.

Hence, if the Complainant were required to have the documents translated into Vietnamese, the proceeding would be unduly delayed, and the Complainant would have to incur substantial expenses for translation.

Therefore, for the purpose of easy comprehension of the Complainant (the only party actively taking part in the proceeding) of the Panel's decision without any necessity of translations and in the interests of fairness to both Parties, as well as the Panel's obligation under paragraph 10(c) of the Rules, which provides that "the Panel shall ensure that the administrative proceeding takes place with due expedition", the Panel hereby decides under paragraph 11(a) of the Rules, that the language of the proceeding shall be English and proceeds to its decision in English in accordance with paragraph 11(a) of the Rules.

(iii) The Respondent's Failure to Respond:

The Respondent's failure to file a Response does not automatically result in a decision in favor of the Complainant (see, e.g., Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn, WIPO Case No. D2010-1413 and M. Corentin Benoit Thiercelin v. CyberDeal, Inc., WIPO Case No. D2010-0941). However, the Panel may draw appropriate inferences from the Respondent's default.

In accordance with paragraph 4(a) of the Policy, in order to decide on the remedy sought by the Complainant, the Panel will examine whether each the following three elements are present:

(i) the Disputed Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(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.

Consequently, the Panel shall further analyze the eventual concurrence of these three grounds in the present case.

B. Identical or Confusingly Similar

The Complainant is required to establish the two following criteria: (1) that it has trademark rights, (2) that the Disputed Domain Name is identical or confusingly similar to its trademark.

Firstly, the Complainant has clearly evidenced that it has trademark rights in the FORD trademarks long before the registration of the Disputed Domain Name. Also in Viet Nam, where the Respondent is located, the Complainant has registered numerous FORD trademarks in word and figurative form, which are also well prior to the registration date of the Disputed Domain Name. Further, the Complainant has sufficiently demonstrated and evidenced that it had a lengthy use of its trademark for its commercial activities, and in particular to designing, manufacturing, financing, and servicing a broad range of automobile, much of which relates to cars, trucks, SUVs, and electrified vehicles, as well as, Lincoln luxury vehicles worldwide.

Secondly, the Panel finds that the Disputed Domain Name comprises the Complainant's distinctive and well-known FORD trademarks in its entirety. The difference between the Disputed Domain Name and the FORD trademarks is the addition of the word "hungvuong", which is a Vietnamese term for "Hùng Vương" subsequent to the word "ford". Despite the fact that "hungvuong" itself has no meaning in English, Vietnamese customers are likely to perceive it as "Hùng Vương". In this regard, we find that "Hung Vuong" is literally the name of King Hung, who is the legendary founder of the first Vietnamese state. As years went by, the verbal element "Hung Vuong" has been utilized by various holders, who incorporate it in their various trademarks/ trade names to designate their businesses in various commercial and industrial fields. "Hung Vuong" is also used to name streets, avenues and other public locations. Over a long period of time, the use of the said verbal element "Hung Vuong" has been so common that "Hung Vuong" has become a generic element, which cannot be used to denote any individuals/ entrepreneurs specifically.

Consequently, the Panel finds that "ford" is the dominant element in the Disputed Domain Name and that the addition of the word "hungvuong" does nothing to distinguish the Disputed Domain Name from the FORD trademark, nor to dispel the risk of confusing similarity, as it was found in previous UDRP panel decisions (see, e.g., Playboy Enterprises International Inc. v. Joao Melancia, WIPO Case No. D2006-1106; AT&T Corp. v. WorldclassMedia.com, WIPO Case No. D2000-0553; Six Continents Hotels, Inc. v. CredoNIC.com / Domain for Sale, WIPO Case No. D2005-0755; Six Continents Hotels, Inc. v. Midas Search Limited, WIPO Case No. D2004-0986; Six Continents Hotels, Inc., Inter-Continental Hotels Corporation v. South East Asia Tours, WIPO Case No. D2004-0388).

Thirdly, the Panel finds, similar to other UDRP panels, that the addition of the gTLD ".com" to the Disputed Domain Name does not constitute an element so as to avoid confusing similarity for purposes of the Policy (see, e.g., Volkswagen AG v. Privacy Protection Services, WIPO Case No. D2012-2066; The Coca-Cola Company v. David Jurkiewicz, WIPO Case No. DME2010-0008; Telecom Personal, S.A., v. NAMEZERO.COM, Inc., WIPO Case No. D2001-0015; F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

On the basis of the foregoing findings, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant's FORD trademark, and the first element under paragraph 4(a)(i) of the Policy is established.

C. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, may demonstrate the Respondent's rights or legitimate interests in the Disputed Domain Name for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy reads:

"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 a 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".

Regarding paragraph 4(c)(i) of the Policy, the Panel finds, in light of the Complainant's asserted facts, that no license, permission or authorization of any kind to use the Complainant's trademark has been granted to the Respondent. There is no evidence available that the Respondent holds any registered or unregistered trademark rights in any country in the world. Thus, the Panel finds that the Respondent has no rights in the trademark FORD.

Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have rights or legitimate interests in the domain name if its use meets certain requirements, which are described in the decision Oki Data Americas, Inc. v. ASD, Inc, WIPO Case No. D2001-0903 ("Oki Data"), including:

- the respondent must actually be offering the goods or services at issue;

- the respondent must use the site to sell only the trademarked goods (otherwise, there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods);

- the site itself must accurately disclose the respondent's relationship with the trademark owner; and

- the respondent must not try to "corner the market" in all relevant domain names, thus depriving the trademark owner of the ability to reflect its own mark in a domain name.

The Panel finds, similarly to other prior UDRP panels, that the Oki Data criteria are appropriate even when the Respondent is not an authorized reseller (see, e.g., National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin' Connection, Inc., WIPO Case No. D2007-1524). In this particular case, the Panel considers the Oki Data criteria with the following findings.

As of the date of this Decision, the Respondent is actually offering for sale of the Complainant's products, much of which relates to cars, trucks, SUVs. The Respondent is using the website under the Disputed Domain Name to sell only the products under the FORD trademarks. In this regard, the Panel notes the Complainant's argument that the site bears some advertisements of automobiles under other brands. However, in review of the case file, the Panel opines that these are mere information available in the automobile sector, not truly "advertisements" and under the current business scheme of the Respondent as reflected in the site under the Disputed Domain Name, there is no conceivable reason for the Respondent's using the FORD trademark in the Disputed Domain Name to bait consumers and switch them to other goods. The Respondent is also not trying to "corner the market" in all relevant domain names, depriving the Complainant of the ability to reflect its FORD marks in a domain name, as actually, the Complainant owns a number of domain names incorporating the verbal element "ford", which comprises a domain name targeting Vietnamese audience.

However, the Panel considers the statement in the "Introduction" section of the site under the Disputed Domain Name that "Auto Ford 3S - 105 Do Lộ - Yên Nghĩa - Hà Đông" is "Đại lý cấp 1 Ford Việt Nam" (in English: "First- level sale agent of Ford Vietnam") and other statements in this section, and find that the Complainant contends that these statements are false, but the Respondent does not file any response against them. As such, the Panel opines that the Complainant has made a prima facie case in this regard. As the Complainant's contentions have not been refuted so far, the Panel accepts it and holds that the Respondent does not meet the Oki Data requirement with regards to "the site itself must accurately disclose the respondent's relationship with the trademark owner".

Even in case the statements in the "Introduction" section of the site under the Disputed Domain Name is accurate, and the offer and resale of the FORD products by the Respondent is legitimate, the right to resell the Complainant's products does not necessarily extend to cover the rights to use the trademark as a basis for a domain name without authorization. In other words, while the selling of goods which originate from the Complainant might entitle the Respondent to use a mark associated with the goods in connection with their sale, this does not give it the right to register and use the mark as a domain name without the consent of the holder of the trademarks (see, e.g., The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co. Inc., WIPO Case No. D2000-0113; Avon Products, Inc. v. Jongsoo Lee, WIPO Case No. D2001-0272; Koninklijke Philips N.V. v. Nguyen Dang Son, Cong Ty TNHH Cong Nghe & Thuong Mai Megaline, WIPO Case No. D2016-1687).

With such a view, the Panel finds that the unauthorized use of the Disputed Domain Name wholly incorporating the Complainant's FORD trademarks does not constitute bona fide use within paragraph 4(c)(i) of the Policy.

Regarding paragraphs 4(c)(ii) and 4(c)(iii) of the Policy, the Panel finds that there is no evidence that would suggest that the Respondent, as an individual, business, or other organization, has been commonly known by the Disputed Domain Name, especially given the fact that the Disputed Domain Name was put under the shield of the privacy service, and such a shield has been lifted recently by the Registrar's verification. The Panel further finds that no evidence has been presented that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name. In fact, as it appears following the Complainant's assertions and evidence with regard to the Respondent's registration and use of the Disputed Domain Name, the Respondent is making a commercial use of the Disputed Domain Name.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, and the second element, paragraph 4(a)(ii) of the Policy is established.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy reads:

"For the purposes of paragraph 4(a)(iii), 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 a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location."

Each of the four circumstances in paragraph 4(b) of the Policy, if found, is an evidence of registration and use of a domain name in bad faith.

In this regard, the Panel finds that the lack of rights and legitimate interests as mentioned in section 6.C of this Decision is an indication of bad faith.

The Panel further finds that the Complaint and other submissions by the Complainant sufficiently evidence that the Complainant does not authorize or endorse the use of the FORD trademarks in the Disputed Domain Name. Further, from the facts of this case, particularly the information stated by the Respondent that it is a first level sale agent of the FORD products in Viet Nam; it is undisputed that the Respondent did not register the Disputed Domain Name in a fortuity. As a reseller of the FORD products, the Respondent had known of the Complainant and its FORD trademarks before the registration of the Disputed Domain Name. The Panel considers the registration of a domain name incorporating a registered trademark, without the trademark holder's consent, for use in a for-profit site, constitutes bad faith.

Further, the Panel finds that, in addition to the adoption of the FORD mark as the uniquely distinctive part in the Disputed Domain Name, the Respondent has been using the Complainant's FORD trademarks (i.e. FORD GO FURTHER, figurative form) and the Complainant's copyrighted auto images/logos on the website resolved to by the Disputed Domain Name, without any authorization or endorsement by the Complainant. This is another persuasive evidence of bad faith.

Therefore, in absence of any response by the Respondent or findings by the Panel to the contrary, the Panel finds that the Respondent intentionally used the Disputed Domain Name and the FORD trademarks to induce consumers to believe that the website under the Disputed Domain Name is somehow authorized or endorsed by the Complainant, for commercial gain, when none of such authorization or endorsement exists in reality. Such misleading behavior, in addition to the fact that the Respondent has no rights or legitimate interests in the Disputed Domain Name as held in Section 6.C above, is indicative of bad faith use on the part of the Respondent.

Taking into account all of the above and the available record, the Panel finds that the Disputed Domain Name was registered and is being used by the Respondent in bad faith under paragraph 4(b)(iv) of the Policy, and the third element under paragraph 4(a)(iii) of the Policy is established.

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 Disputed Domain Name <fordhungvuong.com> be transferred to the Complainant.

Pham Nghiem Xuan Bac
Sole Panelist
Date: July 5, 2017