WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ford Motor Company v. Above.com Domain Privacy / David Woo
Case No. D2019-3038
1. The Parties
The Complainant is Ford Motor Company, United States of America (“United States” or “U.S”), represented by Phillips, Ryther & Winchester, United States.
The Respondent is Above.com Domain Privacy, Australia / David Woo, Hong Kong, China.
2. The Domain Name and Registrar
The disputed domain name <bobferrandoford.com> is registered with Above.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 9, 2019. On December 13, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 16, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 16, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on December 19, 2019.
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 the Respondent of the Complaint, and the proceedings commenced on December 27, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 16, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 17, 2020.
The Center appointed Luca Barbero as the sole panelist in this matter on January 22, 2020. 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 leader in the automotive industry. The Complainant manufactures or distributes automobiles in 200 markets across six continents, with approximately 196,000 employees and 100 plants worldwide.
The Complainant is the owner of several trademark registrations for FORD, including the following, as per trademark certificates submitted as annexes to the Complaint:
- United States trademark registration No. 643185 for FORD (word mark), filed February 16, 1956 and registered on March 26, 1957, in International class 19;
- Australian trademark registration No. 43437 for FORD (figurative mark), filed on December 29, 1925 in class 27;
- Australian trademark registration No. 12063 for FORD (figurative mark), filed on December 29, 1925 in class 1.
For the year 2009, FORD ranked as the 49th most valuable brand in the world on Interbrand’s annual survey of the “100 Most Valuable Global Brands” and FORD has consistently ranked among the top 50 most valuable global brands thereafter.
For the fiscal year ending December 31, 2009, FORD cars comprised 5.5% of the U.S. auto market and FORD trucks comprised 9.8% of the U.S. auto market. The Complainant’s worldwide revenues in 2009 amounted to USD118.3 billion dollars.
The disputed domain name <bobferrandoford.com> was registered on November 8, 2009 and is pointed to a pay-per-click page displaying links related to cars, FORD vehicles and dealers.
5. Parties’ Contentions
The Complainant contends that the disputed domain name <bobferrandoford.com> is confusingly similar to the trademark FORD in which the Complainant has rights, as it reproduces the trademark in its entirety, with the mere addition of the name “Bob Ferrando” and the generic Top Level Domain (“gTLD”) “.com”.
The Complainant highlights that the disputed domain name combines the world-famous FORD trademark with the name of a well-known auto dealer which has operated a Ford and Lincoln dealership in Girard, Pennsylvania, under the name “Bob Ferrando Ford Lincoln” (hereinafter, “Bob Ferrando”), since 1980. The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name for the following reasons:
- the Respondent is not known by the disputed domain name, has not been authorized by the Complainant to use the FORD trademarks in any way, has no connection or affiliation with the Complainant and has never made any bona fide use of the disputed domain name;
- the Respondent’s only use of the disputed domain name was to display pay-per-click advertising links, targeted towards the disputed domain name’s meaning as a trademark;
- the Respondent could not have possibly engaged in demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods and services, since beside the Respondent’s registration and use of the disputed domain name, the Complainant has found no evidence of any person or entity using the name Bob Ferrando Ford, except for Ford’s authorized dealer.
With reference to the circumstances evidencing bad faith, the Complainant indicates that, given the worldwide strength and fame of the FORD trademark, the Respondent’s bad faith was established at the time of registration of the disputed domain name.
Moreover, it is more than likely that the Respondent was aware of the FORD trademark at the time of registration, since the trademark was registered in the United States Patent and Trademark Office prior to the Respondent’s registration of the disputed domain name. The Complainant also emphasizes that the use of a domain name comprising the name of an automotive company’s trademark, with another name, in itself demonstrated bad faith.
The Complainant submits that the Respondent’s conduct in using the disputed domain name to display pay‑per-click advertisements targeted towards the Complainant’s trademark, further infers that the disputed domain name was registered in bad faith. Moreover, the Complainant highlights that the Respondent’s conduct in offering to sell the disputed domain name for USD 950 (offer conveyed to the Complainant through its dealer Bob Ferrando Ford) and USD 350 (requested to the Complainant’s representative upon receipt of a cease and desist letter) further evidences the Respondent’s bad faith.
As a further circumstance demonstrating the Respondent’s bad faith, the Complainant submits that the Respondent has engaged in a pattern of registering third-party famous trademarks in domain names according to paragraph 4(b)(ii) of the Policy, since it was involved as losing party in at least seven prior UDRP proceedings involving famous trademarks.
The Complainant also notes that prior UDRP panels have found that the Respondent’s use of a proxy service evidences bad faith under the same circumstances as those present in this case.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the Complainant has established rights over the trademark FORD based on the trademark registrations cited under section 4 above and the related trademark certificates submitted as annexes to the Complaint.
As highlighted in section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the first element functions primarily as a standing requirement, and the threshold test for confusing similarity typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.
In the case at hand, the Complainant’s trademark FORD is entirely reproduced in the disputed domain name, with the mere addition of the words “Bob Ferrando” (which correspond to the name of an auto dealer in the United States), and of the gTLD “.com”, which is commonly disregarded under the first element confusing similarity test (section 1.11 of the WIPO Overview 3.0).
In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the registered trademark in which it has established rights as prescribed by paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
It is well established that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the Respondent’s rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a)(ii) of the Policy is potentially onerous, since proving a negative can be difficult considering such information is often primarily within the knowledge or control of the Respondent.
Accordingly, in line with previous UDRP decisions, it is sufficient that the Complainant show a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy
In the case at hand, by not submitting a Response, the Respondent has failed to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name. Moreover, it has been repeatedly stated that when a respondent does not avail itself of its right to respond to a complaint, it can be assumed in appropriate circumstances that the Respondent has no rights or legitimate interests in the disputed domain name.
In addition, according to the evidence on record, there is no relationship between the Complainant and the Respondent, and the Complainant has not authorized the Respondent to register or use its trademark or the disputed domain name. The Panel also notes that the disputed domain name is pointed to a website displaying pay-per-click links related to the Complainant’s trademark and products and redirecting users to third-party websites promoting products of the Complainant and of its competitors. The Panel finds that such use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Thus, in light of the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name, in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the Complainant prove that the disputed domain name was registered and is being used by the Respondent in bad faith.
As to the bad faith at the time of the registration, the Panel notes that, in light of the prior registration and use of the Complainant’s trademark in the United States and in other countries, the amount of advertising and sales of the Complainant’s products and of the indisputable well-known character of the trademark FORD worldwide, the Respondent was or ought to be well aware of the Complainant’s trademark, with which the disputed domain name is confusingly similar.
The circumstances that the disputed domain name combines the Complainant’s FORD trademark with the name of a Complainant’s authorized dealer and that the Respondent made reference to the Complainant’s FORD products on the links displayed on the website to which the disputed domain name resolve indeed suggest that the Respondent registered the disputed domain name with the Complainant’s trademark in mind.
In light of the use of the disputed domain name in connection with the webpage currently still online, displaying sponsored links which redirect users to other websites also promoting competitors’ products, the Panel finds that the Respondent is intentionally attempting to attract Internet users to its website for commercial gain, by causing a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the website according to paragraph 4(b)(iv) of the Policy.
The Panel also deems that paragraph 4(b)(i) of the Policy is applicable to the present case since, in light of the content of the correspondence attached to the Complaint, the disputed domain name was as well registered for the purpose of selling it to the Complainant for an amount well in excess of the documented out-of-pockets costs. Indeed the Respondent offered to assign the disputed domain name initially for USD 950 (directly requested to the FORD auto dealer Bob Ferrando) and then for USD 350 (once the case was taken over by the Complainant), amount that in any case is certainly over the ordinary costs of registration of a disputed domain name.
Moreover, the Panel finds that the Respondent engaged in a pattern of bad faith registrations according to paragraph 4(b)(ii) of the Policy since the Respondent was involved as losing party in seven prior UDRP proceedings which related to domain names corresponding to famous trademarks.
Therefore, the Panel finds that the Complainant has also proven the requirement prescribed by paragraph 4(a)(iii) 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 <bobferrandoford.com> be transferred to the Complainant.
Date: February 5, 2020