WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ford Motor Company v. Jon Schwartz, Maurice Schwartz & Sons, Inc, Registration Private, Domains By Proxy
Case No. D2018-1066
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 Respondents are Jon Schwartz, Maurice Schwartz & Sons, Inc of Shrewsbury, New Jersey, United States and Registration Private, Domains By Proxy, DomainsByProxy.com of Scottsdale, Arizona, United States (the “Respondent”).
2. The Domain Name and Registrar
The disputed domain name <eatontownford.com> (the “Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 14, 2018. On May 15, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 16, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent 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 May 24, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 13, 2018. On May 24, 2018, the Center received an email communication from the Respondent. On June 5, 2018, the Respondent requested a 17-day extension of the Response due date. On June 6, 2018, the Center granted an automatic four calendar day extension to the Respondent, confirmed the new Response due date was June 17, 2018, and invited the Complainant to submit comments on the Respondent’s extension request. On June 8, 2018, the Complainant objected to the Respondent’s extension request. On June 8, 2018, the Center confirmed that the Response due date remained June 17, 2018. On June 8, 2018, and June 12, 2018, the Center received further email communications from the Respondent. On June 18, 2018, the Center informed the Parties of the commencement of the panel appointment process.
The Center appointed Lynda M. Braun as the sole panelist in this matter on July 11, 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 has continuously used its brand in connection with automobiles and automobile parts, including cars, medium-duty trucks, and light-duty commercial vehicles, and related accessories, since 1895 in the United States. Currently, the Complainant manufactures or distributes automobiles in two hundred markets across six continents, with approximately 260,000 employees and one hundred plants worldwide, and is well-known worldwide as an automotive industry leader. See Ford Motor Company v. Ignat, BuyThisDomain (icq 745770), WIPO Case No. D2007-1326 (“There is no doubt that the trademark FORD is famous, and that consumers around the globe associate it with automobiles produced by Complainant.”).
The Complainant owns many trademark registrations in the United States and abroad for FORD and trademarks that incorporate the FORD trademark. For example, the Complainant owns FORD, United States Registration No. 74,530, registered on July 20, 1909 for automobiles and their parts; and FORD, United States Registration No. 643,185, registered on March 26, 1957 for passenger cars and trucks (hereinafter referred to as the FORD Mark).
The Complainant sells new and used automobiles through a network of authorized dealers, which are authorized by the Complainant to conduct business under the FORD Mark pursuant to their dealer agreements. Such dealers often use names comprised of the FORD Mark and the business or family name of the dealer operating the dealership or a name that indicates the geographic area in which the dealership is located. One such authorized dealership is located in Eatontown, New Jersey and uses the domain name <dchfordofeatontown.com>.
The Respondent registered the Disputed Domain Name <eatontownford.com> on April 30, 2012 without the Complainant’s knowledge or authorization. The Disputed Domain Name redirected Internet users to the Respondent’s website at “www.schwartzmazda.com” that advertised the Respondent’s dealerships for other automobiles, including, but not limited to Mazda.
On March 26, 2018, the Complainant sent a demand letter to the Respondent, asserting the Complainant’s trademark rights and demanding transfer of the Disputed Domain Name to the Complainant. On April 5, 2018, the Respondent replied, stating that the forwarding of the Disputed Domain Name had been disabled and subsequently requested USD 5,000 for transfer of the Disputed Domain Name from the Complainant. The Complainant declined that offer. The Respondent has maintained his registration for the Disputed Domain Name. The Disputed Domain Name is currently used passively, resolving to an error page that states: “This site can’t be reached. eatontownford.com’s server IP address could not be found.”
5. Parties’ Contentions
The Complainant contends that:
- The Disputed Domain Name is confusingly similar to the trademark in which the Complainant has rights;
- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;
- The Disputed Domain Name was registered and is being used in bad faith; and
The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.
The Respondent did not reply to the Complainant’s contentions other than to offer to sell the Disputed Domain Name to the Complainant.
6. Discussion and Findings
In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)(i)-(iii)):
(i) The Disputed Domain Name is identical or confusingly similar to trademarks or service marks 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 was registered and is being used in bad faith.
A. Identical or Confusingly Similar
This element consists of two parts: first, does the Complainant have rights in a relevant trademark or trademarks and, second, is the Disputed Domain Name identical or confusingly similar to that trademark or trademarks.
It is uncontroverted that the Complainant has established rights in the FORD Mark based on longstanding use as well as its numerous trademark registrations for the FORD Mark in the United States and other jurisdictions. The Disputed Domain Name <eatontownford.com> consists of the FORD Mark in its entirety, preceded by the geographic term “eatontown”, and followed by the generic Top-Level Domain (“gTLD”) “.com”.
The Disputed Domain Name incorporates the Complainant’s FORD Mark in its entirety. Prior UDRP panels have held that “when a domain name wholly incorporates a complainant’s registered mark, that is sufficient to establish identity or confusing similarity for purposes of the Policy.” See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.
Finally, the addition of a gTLD such as “.com” in a domain name may be technically required. Thus, it is well established that such element may be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182.
The Panel finds that the Disputed Domain Name is confusingly similar to a trademark in which the Complainant has rights, and thus, the Complainant has satisfied the first prong of the Policy.
B. Rights or Legitimate Interests
First, under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent bears the burden of production to demonstrate rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“wipo Overview 3.0”), section 2.1.
Second, the Complainant has not authorized, licensed, or otherwise permitted the Respondent to use the Complainant’s FORD Mark nor does the Complainant have any type of business relationship with the Respondent. Nor can the Respondent assert that it was using, or had made demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy. Rather, the Respondent was using the Disputed Domain Name to redirect to the Respondent’s website that is commercial in nature and on which it sold and advertised several other automobile brands. Nor is there any evidence in the record suggesting that the Respondent has rights or legitimate interests in the Disputed Domain Name. Rather, the circumstances suggest that the Respondent’s intention was to exploit the goodwill and reputation attached to the Complainant’s FORD Mark for its own or a third party’s financial gain.
Third, the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. “[W]here a domain name consists of a trademark plus an additional term (at the second- or top-level), UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner.” wipo Overview 3.0, section 2.5.1. As in the present case, “certain geographic terms…or terms with an inherent Internet connotation…are seen as tending to suggest sponsorship or endorsement by the trademark owner.” Id. See also Volvo Trademark Holding AB v. e-motordealer Ltd., WIPO Case No. D2002-0036 (<volvoinsurance.com> could not be legitimately used by an independent broker to sell insurance for Volvo automobiles).
In this case, the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent has not submitted any substantive arguments or evidence to rebut the Complainant’s prima facie case. As such, the Panel determines that the Respondent does not have rights or legitimate interests in the Disputed Domain Name and that the Complainant has satisfied the second prong of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith registration and use of the Disputed Domain Name pursuant to paragraph 4(a)(iii) of the Policy.
First, the Respondent attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the FORD Mark so that Internet users looking for the Complainant’s automobile dealership would assume that they would reach that dealership when clicking on “www.eatontownford.com”, only to find that they were redirected to the website belonging to the Respondent. In doing so, the Panel finds that the Respondent acted in bad faith.
Second, bad faith may be found where the Respondent knew or should have known of the Complainant’s FORD Mark prior to registering the Disputed Domain Name. See Façonnable SAS v. Names4sale, WIPO Case No. D2001-1365. Such is true in the present case in which the Respondent registered the Disputed Domain Name long after the Complainant first used the FORD Mark and long after the Complainant established fame and notoriety worldwide in the FORD Mark.
The continuous and public use of the FORD Mark would make it disingenuous for the Respondent to claim that it was unaware that the registration of the Disputed Domain Name would interfere with the Complainant’s rights. See Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137 (finding bad faith where the respondent registered the domain name after the complainant established rights and publicity in the complainant’s trademarks). Thus, the timing of the Respondent’s registration and use of the Disputed Domain Name indicates that the Respondent acted in bad faith.
Fourth, the registration of a domain name that is confusingly similar to a well-known registered trademark by an entity that has no relationship to that mark may be suggestive of bad faith registration and use. See Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (use of a name connected with such a well-known service and product by someone with no connection to the service and product suggests opportunistic bad faith).
Third, if one considers that the Disputed Domain Name is currently passively held (though the Disputed Domain Name previously redirected to “www.schwartzmazda.com”), this would not prevent a finding of bad faith. “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding.” WIPO Overview 3.0, section 3.3. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. “The lack of use [of a domain name] by itself does not indicate anything. Nevertheless, the lack of use of a domain name that is not backed up by any trademark and that coincides with a known, well-known or renowned trademark owned by someone else, does not indicate other than bad faith in the sense of paragraph 4(b) of the Policy.” See El Bebe Productions Ltd v. Rachid Zouad, WIPO Case No. D2018-0469 (citing Itaú Unibanco Holding S.A. v. Valdery Dos Santos Decorações ME, WIPO Case No. D2009-1335).
Finally, the Respondent’s offer to sell the Disputed Domain Name to the Complainant is also evidence of the Respondent’s bad faith registration and use under paragraph 4(b) of the Policy.
The Panel concludes that the Complainant has made out its case that the Disputed Domain Name was registered and is being used in bad faith, and as such, the Complainant has satisfied the third prong 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 Disputed Domain Name, <eatontownford.com>, be transferred to the Complainant.
Lynda M. Braun
Date: July 12, 2018