WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ford Motor Company v. Whoisguard Protected, WhoisGuard, Inc. / Domain Admin, Whois Privacy Corp. and Tree Inc
Case No. D2020-2500
1. The Parties
Complainant is Ford Motor Company, United States of America (“United States”), represented by Phillips Ryther & Winchester, United States.
Respondents are Whoisguard Protected, WhoisGuard, Inc., Panama / Domain Admin, Whois Privacy Corp., Bahamas and Tree Inc, United States.
2. The Domain Names and Registrars
The disputed domain name <f0rd.com> is registered with Internet Domain Service BS Corp and the disputed domain name <us-ford.com> is registered with NameCheap, Inc. (the “Registrars”). The disputed domain names are hereinafter referred to as the “Domain Names.”
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 25, 2020. On September 28, 2020, the Center transmitted by email to the Registrars a request for registrar verification in connection with the Domain Names. On September 28, 2020, and September 29, 2020, the Registrars transmitted by email to the Center their verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint.
The Complaint also related to the domain name <ford-us.com>. Further to the Center’s communication dated October 2, 2020, Complainant confirmed that it has contacted the registrar and registered the domain name <ford-us.com> on October 15, 2020. On October 20, 2020, Complainant filed an amended Complaint removing the domain name <ford-us.com> from the Complaint and on October 22, 2020, the Center confirmed it shall not proceed in this case with respect to the domain name <ford-us.com>.
The Center sent an email communication to Complainant on October 22, 2020 providing the registrant and contact information disclosed by the Registrars, and requesting Complainant to amend the Complaint adding the Registrar-disclosed registrants as formal Respondents and provide relevant arguments or evidence demonstrating that all named Respondents are, in fact, the same entity and/or that all domain names are under common control; and/or file a separate complaint for any domain name(s) for which it is not possible to demonstrate that all named Respondents are in fact the same entity and/or that all domain names are under common control and indicate (by short amendment or reply email) which domain name(s) will no longer be included in the current Complaint. Complainant filed an amendment to the amended Complaint on October 26, 2020.
On November 4, 2020, the Center noted that there appears to be at least prima facie grounds sufficient to warrant accepting the Complaint for the Panel’s final determination of the consolidation request on appointment.
The Center verified that the Complaint together with the amended Complaint and the amendment to 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”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 4, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 24, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 25, 2020.
The Center appointed Robert A. Badgley as the sole panelist in this matter on December 4, 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
Complainant has been one of the world’s leading automobile manufacturers for more than a century, and Complainant has used the FORD trademark for more than a century. The FORD mark is registered in most countries, including United States Patent and Trademark Office Reg. No. 74,530, registered on July 20, 1909 for “automobiles and their parts.” The FORD trademark has been recognized in various media sources as one of the 100 most valuable brands in the world.
The Domain Name <f0rd.com> was registered on June 28, 2017, and the Domain Name <us-ford.com> was registered on July 1, 2020. The WhoIs contact information for the two Domain Names differs, but, according to Complainant, the two Domain Names are owned by the same person or entity. Complainant alleges that, on July 1, 2020, both Domain Names were used to impersonate the same Ford employee by creating false email addresses. One of Complainant’s suppliers received a fake email from the “@us-ford.com” email address, and responded to that fake email. The supplier then received a reply to his response from the “@f0rd.com” email address. The supplier communicated with the imposter for several days until the imposter, posing as a Ford employee, asked the supplier to transfer a large sum of money and furnished documents to effectuate the transfer which the supplier suspected were forgeries. According to Complainant, the fact that the imposter used both Domain Names in his communications with the supplier indicates that the two Domain Names are under common control, such that, notwithstanding the different WhoIs registrant information, the owners of the Domain Names are in fact one and the same Respondent.
The foregoing allegations are not disputed by either named Respondent. The Panel concludes that there is in fact a single Respondent in this proceeding, and will refer hereafter to Respondent as a single person or entity.
5. Parties’ Contentions
Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Domain Name.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to each of the Domain Names:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel concludes that Complainant has rights in the trademark FORD through longstanding registration and use demonstrated in the record. The Panel also concludes that the Domain Names are confusingly similar to that mark. For one of the Domain Names, the only difference is that the Domain Name replaces the letter “o” with the number “0.” The fact that the letter “o” and the number “0” are routinely confused, look very similar, and are adjacent to each other on the QWERTY keyboard make the Domain Name confusingly similar to the FORD mark. For the other Domain Name, it incorporates the FORD mark and merely adds the geographic descriptor “US” and a hyphen. Once again, the FORD mark is clearly recognizable within the Domain Name.
Complainant has established Policy paragraph 4(a)(i).
B. Rights or Legitimate Interests
For each of the Domain Names, pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Names. Respondent has not come forward in this proceeding to articulate or prove his bona fides vis-à-vis the Domain Names. On the record before the Panel, it is undisputed that Complainant has had no relationship with Respondent, and has never authorized Respondent to use its FORD trademark in a domain name or otherwise.
Further, given the fame of the FORD mark and the fact that one of the Domain Names appears to be a deliberate misspelling of that mark, i.e., a clear attempt at typosquatting, the Panel can conceive of no legitimate basis upon which this Domain Name could have been registered by Respondent.
Moreover, using the Domain Names to host fraudulent email addresses in aid of a phishing scam cannot be considered a legitimate reason for registering the Domain Names. As set forth in section 2.13.1 of WIPO WIPO Overview of WIPO Panel Views on Selected UDPR Questions, Third Edition (“WIPO Overview 3.0”): “Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent.” See also BTWN Exhibits, LLC v. Registration Private, Domains By Proxy, LLC / Ahmed Fawzy, ASM Marketing, WIPO Case No. D2020-0036 (“[t]he use of the Domain Name for an illegal activity such as constructing an email composition containing the Domain Name for deceiving purposes can never confer rights or legitimate interests on Respondent”).
Complainant has established Policy paragraph 4(a)(ii).
C. Registered or Used in Bad Faith
For each of the Domain Names, paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent registered and used the Domain Names in bad faith. Respondent clearly had Complainant and its famous FORD trademark in mind when registering the Domain Names. This is apparent by the use to which Respondent has put the Domain Names, including as fake email addresses used in a fraudulent phishing scam attempted on at least one of Complainant’s suppliers. This phishing scam is clearly a fraudulent and bad faith use of the Domain Names.
Complainant has established Policy paragraph 4(a)(iii).
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 <f0rd.com> and <us-ford.com> be transferred to Complainant.
Robert A. Badgley
Date: December 18, 2020