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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Ted Britt Ford Sales, Inc. v. Domains By Proxy, LLC, DomainsByProxy.com / Carolina Rodrigues, Fundacion Comercio Electronico

Case No. D2020-2047

1. The Parties

1.1 The Complainant is Ted Britt Ford Sales, Inc., United States of America (“United States”), represented by Hyland Law PLLC, United States (the “Complainant”).

1.2 The Respondent is Domains By Proxy, LLC, DomainsByProxy.com, United States / Carolina Rodrigues, Fundacion Comercio Electronico, Panama (the “Respondent”).

2. The Domain Name and Registrar

2.1 The disputed domain name <tedbrittfordfairfax.com> (the “Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 3, 2020. On August 4, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 5, 2020, 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.

3.2 The Center sent an email communication to the Complainant on August 5, 2020, 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 amended Complaint on August 7, 2020.

3.3. The Center verified that the Complaint together with the amended 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”).

3.4 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 11, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 31, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 1, 2020.

3.5 The Center appointed Ike Ehiribe as the sole panelist in this matter on September 8, 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

4.1 The Complainant in this administrative proceeding is Ted Britt Ford Sales, Inc., a Virginia based corporation with its principal place of business in Fairfax, Virginia, United States. The Complainant is said to have been founded in 1959 and developed its goodwill and reputation within the automotive sales and services industry, and continues to operate as one of the most successful automotive dealerships in Virginia. The Complainant is the owner of the trademark TED BRITT which was registered with the United States Patent and Trademark Office on August 1, 1995, under Registration No. 1908805. The Complainant is also said to spend annually approximately USD 3,500,000.00 in advertising its trademark and business within the automotive sales and service industry. In addition, the Complainant operates a Ford dealership located in Fairfax Virginia. The Complainant also registered the domain name <tedbritt.com> in 1998 together with other domain names, such as <tedbrittford.com>, <tedbrittchevrolet.com>, <tedbrittfairfax.com> and <tedbrittchantilly.com> to promote and facilitate its business.

4.2 The Respondent is Carolina Rodrigues of Fundacion Comerico Electronico located in Panama, and according to the WhoIs database, she registered the Disputed Domain Name <tedbrittfordfairfax.com> on July 24, 2020, through the privacy service known as Domains By Proxy LLC. It is said that the webpage to which the Disputed Domain Name resolves contains links to competing automotive websites.

5. Parties’ Contentions

A. Complainant

5.1 The Complainant asserts that the Disputed Domain Name <tedbrittfordfairfax.com> is identical or confusingly similar to the Complainant’s trademark with the addition of the trademark of the product sold by the Complainant (“Ford”) and the Complainant’s geographic location (“Fairfax“). The Complainant further contends that the addition of a third-party mark to the Complainant’s trademark does not prevent a finding of confusing similarity. The Complainant refers in support to section 1.12 of the WIPO Overview of WIPO Panel views on Selected UDRP Questions Third Edition (“WIPO Overview 3.0”). Equally, the Complainant contends that the addition of geographical indicator does not prevent a finding of confusing similarity as also discussed at section 1.8 of the WIPO Overview 3.0.

5.2 The Complainant states further in support of the confusing similarity requirement, that it is the owner of the following domain names of <tedbritt.com>, <tedbrittford.com>, <tedbrittfairfax.com> and <tedbrittchantilly.com>, all of which it uses to promote and facilitate its business. Therefore, Internet users intending to contact the Complainant through its domain name are likely to be confused by the Disputed Domain Name, considering that the Disputed Domain Name is confusingly similar to the domain names used in legitimate emails and similar communication systems used by the Complainant.

5.3 The Complainant contends also that the Respondent has no rights or legitimate interests in the Disputed Domain Name on the following grounds. Firstly, the Disputed Domain Name is not used for the bona fide offering of goods and services, considering that the associated website is a link page with links that compete with or seek to capitalise on the Complainant’s reputation and goodwill. Secondly, the Respondent has never been commonly known by or with the Disputed Domain Name. Thirdly, the Complainant is not making a legitimate noncommercial or fair use of the Disputed Domain Name; instead, the Respondent is misleadingly diverting consumers thereby tarnishing the Complainant’s trademark. Fourthly, the Complainant has no licence, permission or other business affiliation with the Respondent by which the Respondent could own or use a domain name incorporating the Complainant’s trademark.

5.4 As regards the question of bad faith registration, the Complainant refers to all that has been discussed above in relation to lack of legitimate interests as being applicable to bad faith analysis. In addition, the Complainant alludes to the Respondent’s use of the Complainant’s trademark in a substantively identical manner to the Disputed Domain Name in issue as demonstrative of bad faith registration. The Complainant refers in this regard to the recent decision in Ted Britt Ford Sales, Inc.v. Host Master, Transure Enterprise Ltd, WIPO Case No. D2020-1054. The Complainant also asserts that where as here, a domain name is deliberately registered to create confusion with another person’s trademark that is considered to be an abusive registration and use in bad faith. Reference is made to a number of previous UDRP decisions, including Society Francaise Du Radio Telephone – SFR v. Morel David, WIPO Case No. D2009-1563. Thirdly, the Complainant firmly confirms that the Respondent was duly aware that the Disputed Domain Name would misrepresent to the typical Internet user that any associated website was owned and operated by the Complainant. Fourthly, the Respondent’s bad faith is evidenced by several other factors in addition to the fact that the Disputed Domain Name is plainly intended to impersonate a domain name associated with the Complainant. The Complainant in this regard asserts that the Respondent registered the Disputed Domain Name at a time it was aware of the Complainant and its trademark and knowing that the Disputed Domain Name would misrepresent to the typical Internet user that any associated website was owned or operated by the Complainant. Fifthly, the Respondent’s use of the Disputed Domain Name is an intentional scheme to divert Internet traffic away from the Complainant’s websites, which has been held and found to be in consonance with the Respondent’s usual practice of abusive domain name registration and cybersquatting as held in numerous other UDRP decisions including Sunrise Senior Living LLC v Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Foundation Comerico Electronico, WIPO Case No. D2020-1620; and Carvana LLC v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comerico Electronico, WIPO Case No. D2020-1376.

B. Respondent

5.5 The Respondent did not reply to the Complainant’s contentions, in the circumstances, the Panel shall draw such adverse inferences from the failure of the Respondent to reply, as it considers appropriate.

6. Discussion and Findings

6.1 Under paragraph 4(a) of the Policy, to succeed in the administrative proceeding the Complainant must prove that:

i) the Disputed Domain Name is identical and confusingly similar to the trademark or service mark of the Complainant;

ii) the Complainant 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.

6.2 As expressly stated in the Policy the Complainant must establish the existence of each of these three elements in any administrative proceeding.

A. Identical or Confusingly Similar

6.3 This Panel finds and accepts that the Complainant is a well-known successful automotive dealership in Virginia, United States, who owns the trademark TED BRITT registered in the United States Patents and Trademark Office. In the circumstances, the Panel finds that upon a visual examination of the Disputed Domain Name, <tedbrittfordfairfax.com>, the Disputed Domain Name is undoubtedly confusingly similar to the Complainant’s TED BRITT trademark. The Disputed Domain Name actually incorporates the Complainant’s trademark entirely. The Panel further accepts that the addition of a third-party mark (“Ford”) and the Complainant’s geographic location (“Fairfax”) does not in any way preclude the finding of a confusing similarity. Furthermore, the Panel finds that the addition of the generic Top-Level Domain (“gTLD”) extension “.com” does not in any way prevent a finding of confusing similarity when a panel is engaged in a confusing similarity test. In this regard the Panel relies on the detailed discussion on the test for confusing similarity as appears in sections 1.7, 1.8, 1.11.1 and 1.12 of WIPO Overview 3.0. See also the earlier UDRP decision in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, where the Panel held as follows: “As numerous prior panels have held, the fact that a domain name wholly incorporates a complainant's registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks.”

6.4 Therefore, the Panel is satisfied that the Complainant has established that the Disputed Domain Name is confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

6.5 The Panel is equally satisfied that the Respondent has no rights or legitimate interests in the Disputed Domain Name within the ambit of paragraph 4(c) of the Policy. The Respondent who is duty bound to provide such evidence in support of such interests, following Croatia Airlines d.d. v. Modern Empire Internet Ltd, WIPO Case No. D2003-0455 has failed to adduce any evidence of engaging in any actual bona fide offering of goods and services, nor a legitimate noncommercial or fair use of the Disputed Domain Name within the ambit of paragraph 4(c) of the Policy. As asserted by the Complainant, the Panel has found no evidence of any permission, authority or licence or other business affiliation between the Complainant and the Respondent such that justifies the Respondent’s use of any domain name incorporating the Complainant’s trademark. On the contrary, what the evidence adduced by the Complainant establishes is that the Disputed Domain Name resolves to websites containing links that compete with or seek to capitalise on the Complainant’s reputation and goodwill. The Panel finds that such activity cannot by any means be described as legitimate noncommercial of fair use activity within the ambit of the Policy.

6.6 Accordingly, the Panel finds that the Complainant has established that the Respondent does not possess any rights or legitimate interests in the Disputed Domain Name specified in paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

6.7 On the question of bad faith registration and use, this Panel has taken a number of undisputed factors into account to conclude that the Respondent registered the Disputed Domain Name in bad faith with the intention of exploiting the Complainant’s reputation and goodwill.

6.8 Firstly, the Panel finds that it is inconceivable that the Respondent did not know of the Complainant’s trademark, successful profile and reputation in the automotive industry when it/ they elected to register the Disputed Domain Name on July 24, 2020. Secondly, the Panel finds that the Respondent created the Disputed Domain Name solely for the purpose of exploiting the Complainant’s successful profile reputation and goodwill within the automotive industry. Thirdly, the Panel has no hesitation in finding that the Respondent registered the Disputed Domain Name in order as to disrupt the Complainant’s business by intentionally diverting Internet traffic away from the Complainant’s website and as the web page associated with the Disputed Domain Name resolves to web pages containing links to competing automotive dealer websites. See in support Ted Britt Ford Sales Inc. v. Host Master, Transure Enterprise Ltd, supra. Fourthly, the Panel finds that the fact that the Respondent made use of a privacy protection shield taken together with all the other undisputed factors above goes further to establish the Respondent’s bad faith use of the Disputed Domain Name. Fifthly, as indicated in paragraph 5.5 above, the Panel has drawn adverse inferences from the failure of the Respondent to reply to the contentions of the Complainant in these proceedings and or previous correspondence from the Complainant. Sixthly, the fact that the Respondent has been involved in numerous other trademark abusive domain name registrations some of which are Carvana, LLC v. Registration Private Domain’s By Proxy, LLC/ Carolina Rodrigues, Fundacion Comerico Electronico, supra and Sunrise Senior Living, LLC v. Registration Private, Domains By Proxy, LLC/ Carolina Rodrigues, Foundation Comerico Electronico, supra.

7. Decision

7.1 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, <tedbrittfordfairfax.com> be transferred to the Complainant.

Ike Ehiribe
Sole Panelist
Date: September 22, 2020

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