WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ford Motor Company v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico
Case No. D2020-0043
1. The Parties
The Complainant is Ford Motor Company, United States of America (“United States”), represented by Phillips, Ryther & Winchester, United States.
The Respondent is Registration Private, Domains By Proxy, LLC, United States / Carolina Rodrigues, Fundacion Comercio Electronico, Panama.
2. The Domain Name and Registrar
The disputed domain name <lincolntestdriveoffer.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 January 9, 2020. On January 10, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 13, 2020, 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 January 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 16, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 17, 2020.
The Center appointed Peter Burgstaller as the sole panelist in this matter on March 3, 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 is a large multinational, well-known automobile company founded in 1903. One of its luxury model automobiles is called “Lincoln”; according to the Complaint the Complainant has been manufacturing and selling Lincoln automobiles since 1922, when the Complainant purchased the Lincoln Motor Company.
The Complainant is the owner of the trademark LINCOLN, for which it has various registrations in numerous jurisdictions internationally (Annex F of the Complaint), including registration number 511,662 with the registration date of June 28, 1949 on the Principal Register of the United States Patent and Trademark Office (“USPTO”) in respect of motor cars (Annex E of the Complaint).
The Complainant operates an official website under the domain name <lincoln.com>.
The Respondent has registered the disputed domain name on January 31, 2019 without having permission to use the Complainant’s mark LINCOLN in any manner, including in domain names (Annexes A, L, M of the Complaint). The Complainant itself used the disputed domain name for advertising reasons in the years 2015–2018 (Annex H of the Complaint).
The disputed domain name resolves and resolved to various websites providing products in the Complainant’s business (Annexes I, Q, R of the Complaint).
5. Parties’ Contentions
The disputed domain name wholly incorporates the Complainant’s registered LINCOLN mark. The LINCOLN mark of the Complainant is well-known worldwide especially in connection with luxury vehicles since 1922, when the Complainant purchased the Lincoln Motor Company in order to develop a luxury division, and the Complainant has obtained registrations for LINCOLN and marks that incorporate LINCOLN around the world. The Complainant operates an official website at <lincoln.com>. The disputed domain name is at least confusingly similar to this mark; the mere addition of descriptive words will not prevent confusing similarity.
The Respondent has no rights or legitimate interests in respect of the disputed domain name; it is not affiliated with the Complainant in any way and has not been authorized by the Complainant to use or register the disputed domain name.
Finally, the Respondent has registered the disputed domain name on January 31, 2019 in bad faith and uses the disputed domain name in bad faith. The Complainant used the disputed domain name in the years 2015–2018 to advertise a sales event in which the Complainant offered consumers USD 75 Amazon gift cards for test driving Lincoln vehicles. The Respondent was clearly aware of the Complainant and its trademark LINCOLN at the time of registration of the disputed domain name. The Respondent was also using the disputed domain name in connection with the Complainant’s business, inter alia, to resolve to <carpricesecrets.com> which provides online quotes for new cars from dealers in CarPriceSecrets’ network which is in direct and indirect competition with the Complainant’s cars as well as to resolve to <nissanusa.com> or <volvocars.com>. The disputed domain name was also for sale on <sedo.com> for USD 500.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove 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 with respect to 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 and its LINCOLN mark are very well known throughout the world, especially in connection with vehicles.
The disputed domain name entirely incorporates the LINCOLN mark and is confusingly similar to the Complainant’s mark LINCOLN since where the relevant trademark is recognizable within the disputed domain names the mere addition of terms whether descriptive, geographical, pejorative, meaningless, or otherwise will not prevent a finding of confusing similarity under the first element of the Policy (see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). This is especially true, where the relevant mark is well known and distinctive as it is in the present case.
It has also long been held that suffixes such as a generic Top-Level Domain (“gTLD”) cannot typically negate confusing similarity where it otherwise exists, as it does in the present case.
The Panel therefore finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element (see section 2.1 of the WIPO Overview 3.0).
In the present case the Respondent failed to submit a Response. Considering all of the evidence in the Complaint (especially with regard to the Annexes presented by the Complainant) and the Complainant’s contentions that the Respondent has no rights or legitimate interests in the disputed domain name, that the Respondent has no connection or affiliation with the Complainant, and the Respondent has not received any license or consent, express or implied, to use the Complainant’s mark LINCOLN in a domain name or in any other manner lead the Panel to the conclusion that the Complainant has made out an undisputed prima facie case so that the conditions set out in paragraph 4(a)(ii) of the Policy have been met by the Complainant.
C. Registered and Used in Bad Faith
It is the Panel’s conviction that the fame of the LINCOLN mark throughout the world makes it inconceivable that the Respondent registered or used the disputed domain name without knowledge of the Complainant and its rights in the mark LINCOLN; hence, this leads to the necessary inference of bad faith. This finding is supported by the fact that the disputed domain name incorporates the Complainant’s trademark LINCOLN entirely together with terms which are merely descriptive (e.g., “test”, “drive”, and “offer”). In fact, the use of the terms at issue in connection with the mark LINCOLN rather strengthen the impression that the disputed domain name is in some way connected to the Complainant, or at least the Respondent may be seen to free ride on the reputation of the Complainant and its name and mark LINCOLN. This is corroborated by the fact that the Complainant itself used the disputed domain name for advertising reasons in the years 2015–2018.
Moreover, the Respondent has used the disputed domain name in connection with the Complainant’s business, inter alia, to resolve to <carpricesecrets.com> which provides online quotes for new cars from dealers in CarPriceSecrets’ network which is in direct and indirect competition with the Complainant’s cars as well as to resolve to competing websites under the domain names <nissanusa.com> or <volvocars.com>. The Respondent has also failed to present any evidence of any good faith registration and use with regard to the disputed domain name and this Panel finds there is no conceivable plausible reason for good faith registration and use with regard to the disputed domain name.
Taking all these facts and evidence into consideration this Panel finds that the disputed domain name has been registered and is being used in bad faith under 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 <lincolntestdriveoffer.com> be transferred to the Complainant.
Date: March 14, 2020