WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ford Motor Company v. Atul Singh
Case No. D2020-0453
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 Atul Singh, India, self-represented.
2. The Domain Name and Registrar
The disputed domain name <fordmahindra.com> is registered with BigRock Solutions Pvt Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 26, 2020. On February 26, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 27, 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 March 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 26, 2020. The Center received four email communications from the Respondent on March 18, 20, 22, and 29, 2020.
The Center appointed Adam Taylor as the sole panelist in this matter on April 9, 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 the well-known motor manufacturer, founded over 100 years ago.
The Complainant owns many registered trade marks worldwide for FORD including:
- United States trade mark no. 643185, filed on February 16, 1956, registered on March 26, 1957, in international class 12; and
- Indian trade mark no. 1478917, registered on August 14, 2006, in international class 36.
From 2018, newspaper reports began to appear in India that the Complainant was engaged in joint venture discussions with the Indian motor manufacturer Mahindra and Mahindra Limited (“Mahindra”). For example, an article in The Economic Times dated August 21, 2018, was headed: “Mahindra & Mahindra, Ford mega joint venture in the works?” The joint venture was officially announced on October 1, 2019.
The disputed domain name was registered on May 10, 2019.
The only website use of the disputed domain name has been as a holding page headed “Website Under Construction”. This included the message: “[r]egarding this website call [phone number]”.
5. Parties’ Contentions
The following is a summary of the Complainant’s contentions:
The Complainant’s mark is one of the best-known trade marks in the world.
The disputed domain name wholly incorporates the Complainant’s trade mark and that alone is sufficient to establish the first element of the Policy. Inclusion of a third party trade mark does not avoid confusing similarity.
The Respondent lacks rights or legitimate interests in the disputed domain name.
The Complainant has not authorised the Respondent to use its mark.
The Respondent is not known by the disputed domain name and has never made any bona fide use of the disputed domain name. It is inconceivable that the Respondent could have engaged in demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services as any use of the disputed domain name would infringe the Complainant’s trade mark.
The disputed domain name was registered and is being used in bad faith.
The fact of registration of the disputed domain name alone establishes the Respondent’s bad faith, given the strength and fame of the Complainant’s marks.
The Respondent’s awareness of the Complainant may also be inferred from the existence of the Complainant’s prior trade mark registrations in the United States and India.
The Respondent’s passive holding is evidence of bad faith.
Bad faith is also supported by the fact that the disputed domain name is inexplicable other than as a reference to the joint venture between the Complainant and Mahindra, media reports of which predated registration of the disputed domain name.
The following is a summary of the Respondent’s contentions:
The “Save Our Souls (SOS) Foundation” is a government registered society which has operated in Lucknow since 2014. The society broadly works in the areas of education, healthcare, skill development, culture, and environment.
In 2019, the SOS Foundation carried out a programme named “Forum Of Rural Development Management And HIND Rural Association” (FORDMAHINDRA) to facilitate startup programs in rural India. The programme is being headed by the Respondent, and currently focusses on the state of Uttar Pradesh. It is planned to expand it to the rest of the country.
The disputed domain name reflects an abbreviated version of the name of the programme. The same term has been used on all paperwork and social media related to its operations.
The Respondent is “ready for a settlement” provided that its expenses are met.
The Complainant did not communicate with the Respondent before filing the Complaint.
The Respondent registered the disputed domain name before the association between the Complainant and Mahindra.
6. Discussion and Findings
Under the Policy, the Complainant is required to prove on the balance of probabilities that:
- the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights;
- the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- the disputed domain name has been registered and is being used in bad faith.
A. Informal Response
The Response is in the form of a number of emails to the Center, which do not comply with the formal requirements set out in paragraph 5 of the Rules. For example, there is no statement of truth. The Panel has nonetheless decided to admit the Response in accordance with its powers under paragraph 10(d) of the Rules but to bear in mind the Response’s non-compliance with the Rules, including in particular the absence of a statement of truth, when weighing up the Respondent’s assertions in this case.
B. Identical or Confusingly Similar
The Complainant has established rights in the mark FORD by virtue of its registered trade marks as well as unregistered trade mark rights deriving from its longstanding, extensive, and worldwide use of that name.
Section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) makes clear that, where the relevant trade mark is recognisable within the disputed domain name, the addition of other terms would not prevent a finding of confusing similarity under the first element.
Here, the Complainant’s distinctive trade mark is readily recognisable within the disputed domain name and, accordingly, the addition of the term “Mahindra” does not avert a finding of confusing similarity. It makes no difference that the additional term is a third party trade mark - see section 1.12 of WIPO Overview 3.0 .
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
C. Rights or Legitimate Interests
As explained in section 2.1 of WIPO Overview 3.0 , the consensus view is that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element.
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
Paragraph 4(c) of the Policy gives examples of circumstances which, if proved, suffice to demonstrate that a respondent possesses rights or legitimate interests in the disputed domain name.
As to paragraph 4(c)(i) of the Policy, there is no evidence of any use of the disputed domain name for a bona fide offering of goods or services, nor of any demonstrable preparations for such an offering, before the Respondent had notice of this dispute.
The Respondent claims that it has used the term “fordmahindra” as an acronym in connection with an alleged “programme” in India including on all related paperwork and social media. If so, it should have been straightforward for the Respondent to produce evidence in support of its claim, but it has not done so. The Respondent has therefore failed to establish rights or legitimate interests under paragraph 4(c)(i) of the Policy.
Nor is there any evidence that paragraph 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.
D. Registered and Used in Bad Faith
Section 3.3 of the WIPO Overview 3.0 explains that, from the inception of the UDRP, panels 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. While panels will look at the totality of the circumstances in each case, factors that have been considered relevant include: “(i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, […] and (iv) the implausibility of any good faith use to which the domain name may be put”.
In this case, the Panel concludes that the following cumulative circumstances are indicative of passive holding in bad faith:
1. the distinctive nature of the Complainant’s trade mark;
2. the fact that the disputed domain name comprises the distinctive trade marks of two entities who were previously reported to have engaged in discussions regarding a joint venture in India, where the Respondent is located;
3. the failure of the Respondent to set out its position in a formal Response incorporating a statement of truth; and
4. the implausibility of the Respondent’s explanation that the disputed domain name was registered as an acronym for “Forum Of Rural Development Management And HIND Rural Association”, coupled with the lack of any evidence of use of this alleged term.
The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) 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 <fordmahindra.com> be transferred to the Complainant.
Date: April 23, 2020