WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ford Motor Company v. Whois Manager, WhoIs Privacy Management Service / Brian Tyrell, Tyrrell Chevrolet Company
Case No. D2018-1887
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 Whois Manager, WhoIs Privacy Management Service of Lewes, Delaware, United States / Brian Tyrell, Tyrrell Chevrolet Company of Cheyenne, Wyoming, United States, represented by Crank Legal Group, P.C., United States.
2. The Domain Name and Registrar
The disputed domain name <spradleyford.com> 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 August 17, 2018. On August 20, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 21, 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 August 27, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 16, 2018. Upon request of the Respondent the due date for Response was extended to September 20, 2018, in accordance with the Rules, paragraph 5(b). The Response was filed with the Center on September 20, 2018.
The Center appointed Evan D. Brown as the sole panelist in this matter on October 3, 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 has used the mark FORD in the automobile market for well over a century. It has a number of trademark registrations, including United States Reg. No. 74,530, which issued July 20, 1909 for automobiles and their parts.
One authorized dealer of the Complainant’s automobiles – in Pueblo, Colorado, United States – calls itself Spradley Ford Lincoln, and another dealer – in Cheyenne, Wyoming (where the Respondent is located), United States – calls itself Spradley Barr Cheyenne. The Complainant asserts that members of the consuming public refer to these dealerships as “Spradley Ford”. The Cheyenne dealer used to own and use the disputed domain name but let it lapse in 2007.
The Respondent owns a Chevrolet dealership that is close to and competes with the Spradley Barr Cheyenne dealership. The Respondent avers that it acquired the disputed domain name in 2016, and admits to using it to redirect users to the Respondent’s Chevrolet dealership’s website. The Complainant did not authorize the Respondent’s ownership or use of the disputed domain name. The Complainant asserts that certain members of the consuming public reported the website redirection to the Complainant.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s registered trademarks; that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Respondent has asserted a number of arguments against the Complaint, including the following:
- Spradley Barr Cheyenne intentionally let the disputed domain name lapse in 2007 because it does not use “Spradley Ford” as its trade name.
- Reports from consumers that they were directed to the Respondent’s website are without support. The results from web searches for “Spradley Ford Cheyenne” do not show the disputed domain name. Therefore, the Complainant “would have zero loss of consumer direction”.
- The Respondent’s dealership sells used Fords.
- The Respondent has no knowledge of Spradley Ford Lincoln in Colorado and does not compete with that dealership.
- When acquiring the disputed domain name, the Respondent did not have “malicious reasons” nor did it intend to confuse customers, but only did so to acquire a “strategic asset that had value.”
- Because the Complainant did not register any trade names with the Wyoming Secretary of State containing the word “Ford” until after the Complaint was filed, the argument that the disputed domain name incorporates a shortened version of names used in the geographic area is without merit.
- The Respondent has a right to the disputed domain name because the Respondent purchased the disputed domain name.
- The Complainant does not have a right to all URLs containing the word “Ford”.
- The Respondent has not held himself out as having a connection and/or affiliation with Ford and has made bona fide use of the disputed domain name.
- The Complainant has suffered no harm, and this action is an attempt to harass and unjustly enrich the Complainant without due compensation.
- The Respondent does not use the disputed domain name for malicious purposes but instead uses it to “bolster site dominance and strategies related to search engine optimization for the benefit” of the Respondent’s Chevrolet dealership.
- The simple ownership and deployment of a site URL does not constitute infringement of the Complainant’s rights.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, the Complainant must prove each of the following, namely, 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 Complainant undoubtedly has rights in the mark FORD. The mark is associated with a very well-known automobile brand, having been registered and in widespread use for many years prior to the registration of the disputed domain name. The Panel does not find persuasive the Respondent’s arguments that the word “Spradley” had not been used to designate the Ford dealership in Wyoming prior to the filing of this action.
As to whether the disputed domain name is identical or confusingly similar to the FORD trademark, the relevant comparison to be made is with the second-level portion of the disputed domain name only (i.e., “spradleyford”) because “[t]he applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.1.
The disputed domain name contains the FORD trademark in its entirety and simply adds the word “spradley”. As stated in WIPO Overview 3.0, section 1.7, “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.” Further, “the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.” WIPO Overview 3.0, section 1.8. Here, the addition of “spradley” does not avoid confusing similarity between the disputed domain name and the Complainant’s trademark, which is clearly recognizable in the disputed domain name.
Accordingly, the Panel finds that the Complainant has proven the first element of the Policy.
B. Rights or Legitimate Interests
The Complainant will be successful under this element of the UDRP if it makes a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name, and if that prima facie showing remains unrebutted by the Respondent. The Complainant asserts that the Respondent is not known by the disputed domain name, has not been authorized by the Complainant to use the FORD mark in any way, has no connection or affiliation with Ford, and has never made any bona fide use of the disputed domain name. These assertions establish the Complainant’s prima facie case.
The Respondent’s arguments do not rebut this prima facie case.
The Respondent intimates some sort of legitimacy from the fact that its dealership also sells used Ford cars. But it does not drive that point far enough to establish rights or legitimate interests as a reseller. See, Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
Further, the Respondent claims that its use of the disputed domain name is for bona fide purposes. The Panel disagrees that use of the disputed domain name to redirect to the Respondent’s competing business is the type of use that the Policy contemplates as being legitimate.
The Panel has considered the other arguments raised by the Respondent but does not find that any of them show rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Under these facts, it is clear that the Respondent was aware of the Complainant’s FORD marks when it acquired the disputed domain name, and that it did so with bad faith. The Complainant’s FORD marks were famous in 2016 when the Respondent acquired the disputed domain name. And the experience of the Respondent – as the owner of a Chevrolet dealership – make it impossible to conclude registration was made without knowledge of the FORD marks. See, General Motors LLC v. Jeff Shenk, MediaTrac LLC, WIPO Case No. D2017-1817. The Respondent likewise used the disputed domain name in bad faith by redirecting it to the website of a competitor of the Complainant. Id.; Centurylink Intellectual Property, LLC v. Barry Deuschle, WIPO Case No. DCO2015-0030 (Redirecting a domain name containing the complainant’s mark to a website of a competitor of the complainant was “either an act of spite or mischief”). This use of the disputed domain name was clearly an effort to divert potential customers of the Complainant to the Respondent’s website, thereby disrupting the Complainant’s business. Moreover, the Respondent admits the use of the disputed domain name was for commercial purposes and to enhance the business of the Respondent. (It used it to “bolster site dominance and strategies related to search engine optimization for the benefit” of the Respondent’s Chevrolet dealership). For these reasons, the Complainant has satisfied this third element of the UDRP.
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, <spradleyford.com> be transferred to the Complainant.
Evan D. Brown
Date: October 17, 2018