WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ford Motor Company v. “Myford Ltd”, Stanley Pace
Case No. D2018-0727
1. The Parties
The Complainant is Ford Motor Company of Dearborn, Michigan, United States of America (“United States”), represented by Phillips Ryther & Winchester, United States.
The Respondent is “Myford Ltd” of West Yorkshire, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”) / Stanley Pace of Flower Mound, Texas, United States, represented by attorney Steven L. Rinehart.
2. The Domain Name and Registrar
The disputed domain name <myford.com> (the “Domain Name”) is registered with Sea Wasp, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 30, 2018. On April 3, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name and Respondents Myford Ltd and Stanley Pace. On April 9, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent Myford Ltd is listed as the registrant and providing the contact details.
The Center verified that 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 the Respondent of the Complaint, and the proceedings commenced on April 12, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 2, 2018. On April 17, 2018, the Center received an email communication from Myford Ltd wherein it asserted that the email address included in the registration details for the Domain Name was incorrect. On May 3, 2018, the Respondent requested the extension of the response due date. On the same date, the response due date was extended to May 6, 2018. The Response was filed with the Center on May 7, 2018. On May 8, 2018, the Center received an email communication from Myford Ltd disclaiming any interest in the Domain Name.
The Center appointed Mathias Lilleengen as the sole panelist in this matter on May 18, 2018. 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 was founded in 1903 and is a global automotive industry leader. It manufactures or distributes automobiles in 200 markets across six continents, with approximately 260,000 employees and 100 plants worldwide. FORD is a well-known trademark throughout the world. In 2012, FORD was listed in Interbrand’s as the 45th most valuable brand. In a more recent survey, FORD was ranked as the 33rd most valuable global brand.
The Complainant has registered and is using its trademark globally across a range of goods and services, including in the United Kingdom and the United States, see, e.g., United States Registration no. 74530 of July 20,1909 and United States Registration no. 643185 of March 26, 1957.
The Complainant has registered many domain names containing the FORD mark both under generic and county code Top-Level Domain. Its official website is at “www.ford.com”.
The Domain Name was registered on June 21, 2012.
The Respondent purchased the Domain Name on July 24, 2012 for USD 4,900 through “www.snapnames.com”.
The Complainant learned of the Respondent’s registration in early 2018. At that time, the Respondent used the Domain Name to resolve to “www.volvo.com”, and the Respondent was advertising the Domain Name for sale on “www.sedo.com” for a minimum offer of USD 888.
On January 29, 2018, the Complainant sent a demand letter to the Respondent. On that date, the Respondent was using the Domain Name to resolve to “www.realtor.com”, a website advertising residential housing for rent.
The Respondent did not respond to the demand letter, and the copy of the letter sent by mail was returned by the post office as undeliverable. However, the Respondent stopped using the Domain Name to resolve to “www.realtor.com” and began using the Domain Name to resolve to “www.myford.co.uk”, the website of a British engineering company named Myford Ltd. The Respondent also altered the WhoIs record to include Myford Ltd’s name and address. The Respondent did not include either of the email addresses for Myford Ltd that were shown on <myford.co.uk>. Rather, the Respondent included the very similar email address, which the Respondent controls.
On February 6, 2018, the Complainant sent an email to the Respondent noting its failure to respond to the demand letter and alteration of the WhoIs record and reiterating the demand to transfer the Domain Name. The Respondent did not respond and continued to use the Domain Name to direct traffic to “www.myford.co.uk”, and to offer the Domain Name for sale on “www.sedo.com”.
On May 8, 2018, Myford Ltd sent the following email as a response to the Center’s Acknowledgement of Receipt of Response:
“In response to this email, the company Myford Ltd holds no intellectual property over the website/domain name - Myford.com. The Myford postal address should not be attached to this in any way
At the time of drafting the decision, the Domain Name resolves to an error page.
5. Parties’ Contentions
The Complainant provides trademark registrations, and submits that its trademark is famous worldwide. The Complainant argues that the Domain Name is confusingly similar to the Complainant’s trademark. The Domain Name incorporates the Complainant’s trademark in its entirety, in combination with the word “my”. The addition of “my” to a trademark does not distinguish the trademark from the trademark owner. The Complainant uses “myford” as a second-level domain in many jurisdictions, including in Canada, Australia, Viet Nam, Japan, and the Netherlands.
The Complainant argues further that the Respondent is not affiliated or related to the Complainant in any way, or licensed or otherwise authorized to use the FORD trademark. The Respondent is not using the Domain Name in connection with any bona fide offering of goods or services. None of the uses that the Respondent made of the Domain Name prior to receipt of Ford’s demand letter on January 29, 2018, are legitimate. The use of the Domain Name to promote the unrelated Myford Ltd is irrelevant as it is a pretext made up after the Respondent received the Complainant’s demand letter.
As to bad faith, the Complainant argues that the Respondent must have been aware of the Complainant’s world famous trademark at the time of the registration of the Domain Name. Moreover, the Respondent’s conduct in offering to sell the Domain Name for a minimum amount of USD 888 is further evidence of bad faith registration and use. Likewise, the Respondent provided false and inaccurate contact information. The Respondent’s bad faith is underlined by its history of cyberpiracy.
The Respondent claims it registered the Domain Name because of its descriptive meaning as a surname, not because of any relation to the Complainant. According to the Respondent, it has registered hundreds of generic Top-Level Domains (“gTLDs”) incorporating surnames and the Respondent makes its living selling these domain names to others.
The Respondent further argues that the Complainant has not shown bad faith registration or use, nor has the Complainant shown confusingly similarity. The Domain Name contained cost-per-click advertisements and surveys totally unrelated to the Complainant for a five year period up until 2017 when the Complainant claims CPC advertisement for Volvo appeared for 32 days before the Domain Name again started resolving to an unrelated website for real estate services.
In the Respondent’s opinion, “the Complainant would have the Panel find retroactive bad faith registration because advertisements to a competitor appeared for a few days on the Disputed Domain more than five years after it was registered”.
The Respondent concludes it “is a good-faith registrant and user of the Disputed Domain. It also worth noting that the Respondent is commonly known by the name My Ford as the Respondent has incorporated as My Ford, Ltd”.
The Respondent argues it is trading in surnames as domain names and this trade is a recognized legitimate, non-infringing use.
6. Discussion and Findings
A. Identity of Respondent
The Panel notes the registrar-confirmed registrant of the Domain Name is “Myford Ltd” of the United Kingdom. For the facts and circumstances detailed above under “Factual Background”, and for the reasons discussed below, the Panel finds that the Respondent Stanley Pace has used the name and contact details of a third party, namely Myford Ltd, to attempt to hide its identity. Accordingly, the Panel determines that the proper Respondent in these proceedings is Stanley Pace and reference to Respondent in this Decision shall be intended to refer solely to Stanley Pace.
B. Identical or Confusingly Similar
The Complainant has established that it has rights in the trademark FORD. It is undisputed that FORD is a famous trademark.
The test for confusing similarity involves the comparison between the trademark and the Domain Name. In this case, the Domain Name consists of the Complainant’s trademark FORD, with the generic term “my” in front. The addition does not dispel any confusing similarity.
For the purpose of assessing confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the gTLD “.com”.
The Panel finds that the Domain Name is confusingly similar to the trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
It is undisputed that the Complainant has not granted any authorization to the Respondent to register a domain name containing its trademark or otherwise make use of its mark. The Respondent is not affiliated or related to the Complainant in any way. The question is if the Respondent is using the Domain Name in connection with any bona fide offering of goods or services.
The burden of proof under the second element shifts over to the Respondent.
The threshold is described in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, section 2.2:
“As expressed in UDRP decisions, non-exhaustive examples of prior use, or demonstrable preparations to use the domain name, in connection with a bona fide offering of goods or services may include: (i) evidence of business formation-related due diligence/legal advice/correspondence, (ii) evidence of credible investment in website development or promotional materials such as advertising, letterhead, or business cards (iii) proof of a genuine (i.e., not pretextual) business plan utilizing the domain name, and credible signs of pursuit of the business plan, (iv) bona fide registration and use of related domain names, and (v) other evidence generally pointing to a lack of indicia of cybersquatting intent. While such indicia are assessed pragmatically in light of the case circumstances, clear contemporaneous evidence of bona fide pre-complaint preparations is required”.
The Panel is not convinced by that “the Respondent is commonly known by the name My Ford as the Respondent has incorporated as My Ford, Ltd”, as claimed in the Response. It is not backed by evidence. Moreover, it seems clear that the Respondent has not acted on behalf of Myford Ltd, see email from Myford Ltd to the Center of May 8, 2018. On the contrary, it seems likely from the evidence that the Respondent has hidden its identity behind a third party’s name and address. Before addressing the Respondent’s main argument for having a legitimate interest, the Panel would like to express that abovementioned ploys do not add to the Respondent’s credibility.
The Respondent argues that it has registered “hundreds of gTLDs incorporating surnames and Respondent makes his living selling these domain names and others”. The Respondent has attached a list of domain names as evidence. There is no explanation to ownership. When doing a random sample WhoIs search for one of the domain names, the registrant is under WhoIs Privacy and the administrative contact is in Australia. It is therefore impossible for the Panel to verify the Respondents’ claim that it controls all these domain names, and therefore, impossible to verify the Respondent’s claim that it is using the Domain Name in connection with bona fide offering of goods or services.
The present case differs from Raccords et Plastiques Nicoll v. Tucows.com Co., WIPO Case No. D2008-1322 in which an ICANN accredited registrar acting as the respondent established that its service of offering vanity email was bona fide: “While the Panel accepts that vanity email addresses could be a legitimate business activity, the Respondent did not provide any information in its Response regarding the popularity of the name Nicoll in the United States of America. However, the Respondent did state that it currently had two customers with the surname of “Nicoll” who acquired vanity email or website services from the disputed domain name (Exhibit F of the Response). The Panel is prepared to accept that Nicoll is a surname shared by many people in the United States of America (even though it may not be a well-known surname), and that people with the surname Nicoll are currently using the Respondent’s vanity service”.
Accordingly, and for the reasons discussed below, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
It is undisputed that the Respondent was aware of the Complainant’s trademark and its business when it registered the Domain Name. There seems to be little disagreement as to the facts leading up to the case, including how the Respondent has changed the registration and where it has resolved. The parties differ in what was the Respondent’s intention when it registered the Domain Name.
The Panel finds that on the balance of probabilities the Respondent registered and is using the Domain Name with the intention of selling to the Complainant or a competitor, for valuable consideration in excess of out-of-pocket costs. It is based on the Panel’s assessment of the following facts: the trademark is famous, the Respondent was willing to sell the Domain Name for a high price (both the price paid by the Respondent and its price asked by the Respondent would suggest that the Respondent’s intention was not to sell it as an ordinary name) and the timing of the Respondent’s linking to the unrelated Myford Ltd. Moreover, the Respondent has shifted the registration details and hidden its identity.
For the reasons set out above, the Panel concludes that the Domain Name was registered and is being used in bad faith, within the meaning of the paragraph 4(a)(i) of the Policy.
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 <myford.com> be transferred to the Complainant.
Date: May 29, 2018