WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ford Motor Company v. Carolina Rodrigues, Fundacion Comercio Electronico
Case No. D2018-2787
1. The Parties
The Complainant is Ford Motor Company of Michigan, United States of America (“United States”) represented by Phillips Ryther & Winchester, United States.
The Respondent is Carolina Rodrigues, Fundacion Comercio Electronico of Panama City, Panama.
2. The Domain Names and Registrar
The disputed domain names <fordcredit.org> and <gfordcredit.com> are registered with GoDaddy.com, LLC GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 5, 2018. On December 6, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 7, 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 details1 .
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 December 10, 2018. In accordance with the Rules, paragraph 5, the due date for the Response was December 30, 2018. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default January 4, 2019.
The Center appointed Jon Lang as the sole panelist in this matter on January 21, 2019. 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 and has approximately 260,000 employees and 100 plants worldwide. It has numerous registered trade marks in the United States and many other jurisdictions, including FORD (United States Registration No. 74,530, registered on July 20, 1909).
The Complainant has continuously used FORD in connection with automobiles and related goods and services since 1895 in the United States and is now known throughout the world.
In 2017, FORD was listed in Interbrand’s annual survey of the “100 Most Valuable Global Brands” as the 33rd most valuable global brand. FORD has consistently been ranked in the top 50.
Ford Motor Credit Company LLC (“Ford Credit”) is an indirect, wholly-owned subsidiary of the Complainant. It is one of the world’s largest automotive finance companies and has supported the sale of the Complainant’s products since 1959. Ford Credit is widely known by the name “Ford Credit” and operates its official website at “www.fordcredit.com”. FORD CREDIT is also a registered trademark (Ünited States Registration No. 3,738,135, Registration date January 12, 2010).
The Respondent registered <gfordcredit.com> on June 11, 2018 and <fordcredit.org. on August 27, 2018 (together the Domain Names).
5. Parties’ Contentions
The Complainant has rights in the above-described registered marks and also common law rights in the same, such marks to be referred to hereafter (unless the context otherwise dictates) as the FORD Marks.
The Respondent was not authorized by the Complainant to register either Domain Name.
The Respondent is a cyberpirate and has been the losing respondent in at least 29 UDRP proceedings.
The Respondent began using <gfordcredit.com> to resolve to “www.carpricesecrets.com”, which provides online quotes for new cars from dealers in CarPriceSecrets’ network in direct and indirect competition with the Complainant. The Respondent also listed the Domain Name for sale on sedo.com for a minimum bid of $500. On September 10, 2018, Ford’s external counsel sent a demand letter to the Respondent, seeking a transfer of the Domain Name. The Respondent did not respond. On September 18, 2018, the demand letter was re-sent. No further communications took place. The Respondent now uses the Domain Name to resolve to “www.volvo.com”.
The Respondent commenced use of the Domain Name to display pay-per-click advertising links related to subjects such as online billing and credit card loan payments. On September 23, 2018, Ford’s external counsel sent a demand letter to the Respondent, seeking a transfer of the Domain Name. The Respondent did not respond. On October 3, 2018, the demand letter was re-sent. No further communications took place. The Respondent also listed <fordcredit.org> for sale on sedo.com for $500. The Domain Name also now resolves to “www.volvo.com”.
The domain names are confusingly similar to a trademark or service mark in which Complainant has rights
The Domain Names wholly incorporate FORD and FORD CREDIT. The Domain Name <gfordcredit.com> differs from the FORD CREDIT mark, the official domain name, <fordcredit.com> and the well-known company name only by the addition of the letter “g.” The Domain Name <fordcredit.org> differs from the FORD CREDIT trademark, the official domain name, <fordcredit.com> and the well-known company name only by the genericTop-Level Domain (“gTLD”) “.org.” Neither difference distinguishes the Domain Names from FORD or FORD CREDIT.
The addition or alteration of a letter does not diminish the association between a domain name and a well-known trademark. Similarly, a gTLD such as “.org” has no impact on the overall impression of the dominant portion of a disputed domain name and is therefore irrelevant to determining confusing similarity.
The fact that a domain name wholly incorporates a complainant’s trademark is sufficient to establish identity or confusing similarity for the purposes of the Policy, despite the addition of other words.
Respondent has no rights or legitimate interests in respect of the Domain Names
The Respondent has no legitimate rights in the Domain Names because the Respondent is not known by the Domain Names, has not been authorized by the Complainant to use the FORD Marks in any way, has no connection or affiliation with Ford and has never made any bona fide use of the Domain Names.
None of the uses made of the Domain Names are legitimate. Use of a domain name comprised of an auto manufacturer’s trademark to direct traffic to another auto manufacturer’s website or to a website providing sales leads to competing auto dealers, is not legitimate.
The Respondent’s use of the Domain Name, <fordcredit.org> to display advertising links is similarly illegitimate.
The Domain Names were registered and are being used in bad faith
Given the strength and fame of the FORD Marks, the Respondent’s bad faith is established by the fact of registration alone. FORD and FORD CREDIT fall within a select class of internationally strong marks that have become so famous that it is impossible for any respondent to claim that they were unaware of the Complainant’s prior rights.
The Respondent’s awareness of FORD and FORD CREDIT may also be inferred because the marks were registered with the UnitedStates Patent and Trademark Office prior to the Respondent’s registration of the Domain Names (and also because FORD and FORD CREDIT are well-known and famous).
The Respondent’s use of the Domain Names to resolve to websites advertising competing vehicles for sale, whether via a referral website or directly to a competing manufacturer’s official website, demonstrates bad faith for the purposes of the Policy.
The Respondent’s bad faith is demonstrated with respect to <fordcredit.org> by the Respondent’s use of the Domain Name to display generic advertising links.
The Respondent’s conduct in attempting to sell the Domain Names for amounts in excess of the Respondent’s out-of-pocket domain name registration fees, is also evidence of the Respondent’s bad faith.
So too is the Respondent’s bad faith demonstrated by its long history of cyberpiracy, and also by the Respondent’s employment of a proxy service to conceal its identity.
Any of the above circumstances, alone or in combination, are sufficient to justify a finding that the Respondent has acted in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is: (i) identical or confusingly similar to a trademark or service mark in which a complainant has rights; and (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A complainant must prove each of these three elements to succeed.
A. Identical or Confusingly Similar
The Complainant clearly has rights in the FORD marks.
Ignoring the gTLD’s “.org” and “.com” (as the Panel may do for comparison purposes), the Domain Names comprise both the Complainant’s FORD trademark and its FORD CREDIT trademark. The FORD Marks are clearly recognizable within the Domain Names. In the case of <fordcredit.org>, the Domain Name is identical to the FORD CREDIT mark and very similar to the FORD mark. In the case of <gfordcredit.com>, the Domain Name is very similar to both marks. The only questions to consider are whether the letter “g” in the <gfordcredit.com> Domain Name renders that Domain Name something other than confusingly similar (to either the FORD or FORD CREDIT marks) and whether the inclusion of the word CREDIT in both domain names renders either something other than confusingly similar to the FORD mark. Under the UDRP, the test for confusing similarity typically involves a comparison, on a visual or aural level, between the trademark and the domain name. To satisfy the test, the trademark to which the domain name is said to be confusingly similar, would generally need to be recognisable as such within the domain name. The addition of common, dictionary, descriptive, or negative terms are usually regarded as insufficient to prevent confusing similarity.
The Panel has no hesitation in finding that the Domain Name <fordcredit.org> is identical to the Complainant’s FORD CREDIT mark and confusingly similar to the Complainant’s FORD mark, and that the Domain Name <gfordcredit.com> is confusingly similar to both the Complainant’s FORD and FORD CREDIT marks. Accordingly, the Panel finds that paragraph 4(a)(i) of the Policy has been established.
B. Rights or Legitimate Interests
By its allegations, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Names and, as such, the burden of production shifts to the Respondent to come forward with arguments or evidence demonstrating that it does in fact have such rights or legitimate interests. The Respondent has not done so and accordingly, the Panel is entitled to find, given the prima facie case made out by the Complainant, that the Respondent indeed lacks rights or legitimate interests in the Domain Names. Despite the lack of any answer to the Complaint however, the Panel is entitled to consider whether there would be anything inappropriate in such a finding.
Despite a respondent not having been licensed by or affiliated with a complainant, it might still be able to demonstrate rights or legitimate interests. For instance, a respondent can show that it has been commonly known by a domain name or that it is making a legitimate noncommercial or fair use of a domain name without intent for commercial gain to misleadingly divert consumers.
Here, the Respondent is not known by either Domain Name and, given the nature of their use, it cannot be said that there is legitimate noncommercial use. As to the requirement of an absence of an intent to mislead (for commercial gain), the Respondent’s choice of Domain Names suggests the very opposite. In these circumstances, “use” could not be regarded as “fair”, either.
A respondent can also show that it is using a domain name in connection with a bona fide offering of goods or services but in the circumstances of this Complaint, it would be difficult to accept that there is anything bona fide about the Respondent’s use of either Domain Name.
The Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
One way a complainant may demonstrate bad faith registration and use is to show that a respondent has intentionally attempted to attract, for commercial gain, Internet users to its (or an associated) website by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of its (or an associated) website or of products or services on it. In the Panel’s view, these circumstances are present here.
The Respondent clearly knew of the Complainant and its rights prior to registration of the Domain Names. FORD and FORD CREDIT are well known marks. If a UDRP proceeding is commenced in circumstances where famous marks are used in identical or confusingly similar domain names, it is incumbent on the Respondent to come forward with an explanation if it is to avoid or attempt to avoid the risk of an adverse finding, particularly where, as here, the Respondent has a history of being on the wrong side of UDRP proceedings. Moreover, a respondent’s non-participation in UDRP proceedings is a factor that can be taken into account, along with others, in considering bad faith under the Policy.
The Respondent chose well known trademarks to incorporate into two Domain Names rendering such Domain Names either identical or confusingly similar to the FORD marks. There is no evidence that the Respondent has any rights or legitimate interests in the Domain Names but ample evidence to suggest that, for the purposes of the Policy, there has been both registration and use of the Domain Names in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <fordcredit.org> and <gfordcredit.com> be transferred to the Complainant.
Date: January 28, 2019
1 In the Complaint, the Complainant indicates that the Domain Names were held in the name of a Proxy Service and (before the filing of the Complaint, the Complainant was able to identify the true or beneficial registrant).