WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ford Motor Company v. Domain Admin, Whois Privacy Corp. / Maddisyn Fernandes, Fernandes Privacy Holdings
Case No. D2017-1199
1. The Parties
Complainant is Ford Motor Company of Dearborn, Michigan, United States of America (“United States”), represented by Phillips Ryther & Winchester, United States.
Respondent is Domain Admin, Whois Privacy Corp. of Nassau, Bahamas / Maddisyn Fernandes, Fernandes Privacy Holdings of La Paz, Bolivia (Plurinational State of).
2. The Domain Name and Registrar
The disputed domain name <fordpay.com> (the “Domain Name”) is registered with Internet Domain Service BS Corp (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 20, 2017. On June 21, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 26, 2017, 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 Complainant on the same date providing the registrant and contact information disclosed by the Registrar, and inviting omplainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on June 27, 2017.
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” 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 Respondent of the Complaint, and the proceedings commenced on June 28, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 18, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 19, 2017.
The Center appointed Dinant T.L. Oosterbaan as the sole panelist in this matter on August 3, 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
Complainant Ford Motor Company is a publicly-traded corporation, organized under the laws of Delaware, with its principal place of business in Dearborn, Michigan, United States. Complainant was founded in 1903 and is a global automotive industry leader. Complainant manufactures or distributes automobiles in 200 markets across six continents, with approximately 260,000 employees and 100 plants worldwide.
According to the evidence submitted by Complainant, Complainant has a large number of trademark registrations for FORD, including:
- the trademark FORD registered with the United States Patent and Trademark Office under number 74,530 and a registration date of July 20, 1909;
- the trademark FORD registered with the United States Patent and Trademark Office under number 643,185 and a registration date of March 26, 1957.
The Domain Name <fordpay.com> was registered on February 1, 2014. The Domain Name currently resolves to a website redirecting to other websites, including the website of a competitor of Complainant and websites displaying sponsored listings and pay-per-click links.
The trademark registrations of Complainant were issued prior to the registration of the Domain Name.
5. Parties’ Contentions
Complainant submits that the Domain Name is confusingly similar to its FORD trademark as it contains the well-known FORD trademark in its entirety.
According to Complainant, Respondent has no rights or legitimate interests in respect of the Domain Name because Respondent is not known by the Domain Name, has not been authorized by Complainant to use the FORD marks in any way, and has no connection or affiliation with Complainant. According to Complainant, Ford learned of Respondent’s registration of the Domain Name in March 2017. At that time, Respondent was using the Domain Name to resolve to a webpage on “www.volvocars.com”, advertising Volvo automobiles for sale. According to Complainant the website to which the Domain Name resolves also redirected to a webpage on “www.yahoo.com” displaying the results of the search phrase “ford dealers”; the search results page not only displays ads for indirect competitors of Complainant, which sell brands in addition to the automobiles of Complainant, but also advertising for websites selling automobiles in direct competition with Complainant. According to Complainant, Respondent has failed to create a bona fide offering of goods or services and is not making a legitimate noncommercial or fair use of the Domain Name.
Complainant submits that given the strength and fame of the FORD marks, Respondent’s bad faith is established by the fact of registration alone. According to Complainant FORD falls within a select class of internationally strong marks that have become so famous that it is impossible for any respondent to claim that it was unaware of Complainant’s prior rights. In addition, Respondent’s use of the Domain Name to resolve to the website of a competitor of Complainant, namely Volvo, also demonstrates Respondent’s bad faith. Finally, according to Complainant, Respondent is a notorious cyberpirate having been the losing respondent in multiple proceedings under the UDRP in 2017 alone.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain an order that the disputed domain name should be transferred or cancelled:
(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.
The Panel will proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied in this proceeding.
A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, Complainant must first of all establish rights in a trademark or service mark and secondly that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
Complainant has established that it is the owner of several trademark registrations for FORD. The Domain Name <fordpay.com> incorporates the entirety of the FORD trademark as its distinctive element. Many UDRP panels have found that a disputed domain name is confusingly similar to a complainant’s trademark where the disputed domain name incorporates a complainant’s trademark in its entirety. The addition of the descriptive term “pay” and the generic Top-Level Domain (“gTLD”) “.com” is insufficient to avoid a finding of confusing similarity.
The Panel finds that Complainant has proven that the Domain Name is confusingly similar to Complainant’s trademarks.
B. Rights or Legitimate Interests
In the opinion of the Panel, Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name. Complainant has not licensed or otherwise permitted Respondent to use any of its trademarks or to register the Domain Name incorporating its trademarks. Respondent is not making a legitimate noncommercial or fair use of the Domain Name with intent for commercial gain to misleadingly divert consumers or to tarnish the trademarks of Complainant.
Based on the evidence provided by Complainant, the Domain Name resolves to a website of a competitor of Complainant and also to a website which contains links not only to dealers selling the cars of Complainant but also links to competitors of Complainant. At different times the Domain Name also resolves to a standard pay-per-click site. For verification purposes the Panel accessed the website to which the Domain Name resolves. After redirection the following message appeared: “The Sponsored Listings displayed above are served automatically by a third party. Neither the service provider nor the domain name owner .maintain any relationship with the advertisers. In case of trademark issues please contact the domain owner directly.”
The Panel does not consider such use a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Name. In addition, the website under the Domain Name does not accurately and prominently disclose the relationship between Respondent and Complainant as the holder of the famous FORD trademarks, in particular as there has never been any business relationship between Complainant and Respondent. Respondent is also not commonly known by the Domain Name nor has it acquired any trademark or service mark rights.
No Response to the Complaint was filed and Respondent has not rebutted Complainant’s prima facie case.
Under these circumstances, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
The Panel finds that the Domain Name has been registered and is being used in bad faith. Noting the
well-known status of the FORD marks and the overall circumstances of this case, the Panel finds it more likely than not that Respondent knew or should have known Complainant’s famous FORD marks.
The Panel notes that the Domain Name currently resolves to a website redirecting to other websites, including the website of a competitor of Complainant and websites displaying sponsored listings and
pay-per-click links. The Panel further notes that the Domain Name incorporates Complainant’s famous trademarks in its entirety, which indicates, in the circumstances of this case, that Respondent registered and used the Domain Name with the intention to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the trademarks of Complainant as to the source, sponsorship, affiliation, or endorsement of its website or location or of a service on its website or location, which constitutes registration and use in bad faith pursuant to paragraph 4(b)(iv) of the Policy. As noted by previous UDRP panels, the fact that such links may be generated automatically does not prevent a finding of bad faith.
The Panel accepts Complainant’s undisputed submission that bad faith registration and use of the Domain Name is further indicated by the fact that Respondent has been found to have registered and used domain names in bad faith in multiple other cases under the Policy which suggests a pattern of conduct on the part of Respondent, including but not limited to decisions in the following cases: LEGO Juris A/S v. Domain Admin, Whois Privacy Corp. / Maddisyn Fernandes, Fernandes Privacy Holdings, WIPO Case No. D2017-0053; Philip Morris USA Inc. v. Domain Admin, Whois Privacy Corp. / Maddisyn Fernandes, Fernandes Privacy Holdings, WIPO Case No. D2017-0196; TPI Holdings, Inc. v. Domain Admin, Whois Privacy Corp. / Maddisyn Fernandes, Fernandes Privacy Holdings, WIPO Case No. D2017-0239; and Philip Morris USA Inc. v. Maddisyn Fernandes, Fernandes Privacy Holdings / Domain Admin, Whois Privacy Corp., WIPO Case No. D2017-0607.
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, <fordpay.com>, be transferred to Complainant.
Dinant T. L. Oosterbaan
Date: August 9, 2017