WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ford Motor Company v. Myke Towers
Case No. D2021-0081
1. The Parties
The Complainant is Ford Motor Company, United States of America (“United States”), represented by Phillips Winchester Attorneys at Law, United States.
The Respondent is Myke Towers, Venezuela (Bolivarian Republic of).
2. The Domain Names and Registrar
The Disputed Domain Names <fordassembler.com> and <fordplantasonora.com> are registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 12, 2021. On January 12, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On January 13, 2021, 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 18, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 7, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 8, 2021.
The Center appointed Nicholas Weston as the sole panelist in this matter on February 15, 2021. 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 corporation founded in the United States in 1903 that operates a business manufacturing and distributing cars in approximately 200 markets across six continents, with more than 150,000 employees and over 100 plants worldwide. The Complainant holds registrations for the trademark FORD and variations of it in numerous countries, including in the United States pursuant to the Registration No. 74,530, registered on July 20, 1909.
The Complainant is also the owner of, inter alia, the domain name <ford.com>, which resolves to the company’s main website. It also operates, through its Mexican affiliate, a vehicle assembly plant located in Sonoma, Mexico.
The Disputed Domain Name <fordassembler.com> was registered on October 25, 2020. The Complainant has supplied uncontested evidence that this Disputed Domain Name redirected to a website containing content representing it to be an official website operated by the Complainant and offering for sale motor vehicles manufactured by the Complainant and competitor motor vehicle companies, Honda and Toyota.
The Disputed Domain Name <fordplantasonora.com> was registered on October 20, 2020, and as at December 29, 2020 displayed an inactive webpage stating that the account has been suspended.
5. Parties’ Contentions
The Complainant cites its United States trademark registration No. 74,530, registered in 1909, and numerous other registrations internationally for the mark FORD, as prima facie evidence of ownership.
The Complainant submits that the mark FORD is well known and that its rights in that mark predate the Respondent’s registration of the Disputed Domain Names. It submits that the Disputed Domain Names are confusingly similar to its trademark, because each Disputed Domain Name incorporates in its entirety the FORD trademark and that the similarity is not removed by additions of the word “assembler” in the case of the Disputed Domain Name <fordassembler.com>, or the words “plantasonora” in the case of the Disputed Domain Name <fordplantasonora.com>, as well as the generic Top-Level Domain (“gTLD”) “.com”.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because “Respondent is not known by the Disputed Domain Names, has not been authorized by Ford to use the Ford Marks in any way, has no connection or affiliation with Ford, and has never made any bona fide use of the Disputed Domain Names”.
Finally, the Complainant alleges that the registration and use of the Disputed Domain Names were, and currently are, in bad faith, contrary to the Policy and Rules having regard to the prior use and fame of the Complainant’s trademarks.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:
(i) that each Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and
(iii) that the Disputed Domain Names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark FORD in numerous countries including the United States. The requirements of the first element for purposes of the Policy may be satisfied by a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358).
Turning to whether the Disputed Domain Names are identical or confusingly similar to the FORD trademark, the Panel observes that:
1) the Disputed Domain Name <fordassembler.com> comprises: (a) an exact reproduction of the Complainant’s trademark FORD; (b) followed by the word “assembler”; (d) followed by the gTLD “.com”.
2) the Disputed Domain Name <fordplantasonora.com> comprises: (a) an exact reproduction of the Complainant’s trademark FORD (b) followed by the term “planta”; (c) followed by the geographical identifier “Sonora”; (d) followed by the gTLD “.com”.
It is well established that the gTLD used as technical part of a domain name may be disregarded (see Autodesk v. MumbaiDomains, WIPO Case No. D2012-0286). The relevant comparison to be made is with the second-level portion of the Disputed Domain Names, specifically: “fordassembler” and “fordplantasonora”.
It is also well established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it may be confusingly similar to that mark despite the addition of other words such as a descriptive word or geographical identifier (see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Wal-Mart Stores, Inc. v. Kuchora, Kal, WIPO Case No. D2006-0033).
In the case of <fordassembler.com>, the Disputed Domain Name wholly incorporates the trademark FORD and combines it with a term, “assembler”, that is closely associated with or descriptive of an automobile factory worker involved in the motor vehicle manufacturing industry. In the case of <fordplantasonora.com>, the Disputed Domain Name wholly incorporates the trademark FORD and combines it with a geographical reference that is closely associated with manufacturing facilities operated by the Complainant’s Mexican affiliate in Sonora, Mexico. These additional terms do not prevent a finding of confusing similarity.
This Panel accepts the Complainant’s contention that the Disputed Domain Names are confusingly similar to the Complainant’s FORD mark and finds that the Complainant has established paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists the ways that the Respondent may demonstrate rights or legitimate interests in the Disputed Domain Names. The Policy also places the burden on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the Disputed Domain Names. Because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the Respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306; WIPO Overview of WIPO Panel Views on Selected URDP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1).
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because there is no evidence of the Respondent’s use, or demonstrable preparations to use, the Disputed Domain Names in connection with a bona fide offering of goods or services.
This Panel accepts the Complainant’s uncontested evidence that the Respondent uses the Disputed Domain Name <fordassembler.com> to redirect to a website displaying advertisements for cars manufactured by the Complainant and brands that directly compete with FORD, namely competitors Honda and Toyota motor companies. The Respondent presumably hopes to – or does – receive advertising or sales commissions for redirecting the Disputed Domain Name <fordassembler.com> to promote those various brands of cars for sale. This conduct is inconsistent with the Respondent having rights or legitimate interests.
This Panel also accepts the Complainant’s uncontested evidence that the Respondent is essentially impersonating Ford. The website that the Disputed Domain name <fordassembler.com> contains marketing verbiage and branding plagiarized from the Complainant’s website that specifically makes the claim it is operated by the Complainant. The Disputed Domain Name <fordplantasonora.com> references an authorized manufacturing plant of one of the Complainant’s affiliate entities, located in Sonora, Mexico. Use of a domain name to impersonate the trademark owner is not legitimate and cannot establish legitimate rights (see, Electro-Sensors, Inc. v. Charles Nguyen, WIPO Case No. D2013-1517 (“(it is) the very opposite of use in connection with a bona fide offering of goods or services that might otherwise give rise to a legitimate right or interest in a domain name”).
The Complainant also submits that a registration can nonetheless be illegitimate where confusion arises by a simple comparison between the Complainant’s trademark and the disputed domain name, citing Aastra Telecom Inc. v. Spring Mountain Enter Pty Ltd., WIPO Case No. DAU2008-0003. This Panel also accepts that the conduct is also inconsistent with the Respondent having rights or legitimate interests.
On any objective view, the Respondent is not a reseller with a legitimate interest in a domain name incorporating a manufacturer’s mark, such that it could meet the cumulative tests set out in Oki Data Americas, Inc. v. ASD, Inc., supra. The advertisements displaying links to “Honda” and “Toyota” branded motor vehicles have a direct connection to the value of the Complainant’s trademarks as contained in the Disputed Domain Name. Nor, alternatively, is the Respondent commonly known by any of the Disputed Domain Names.
This Panel accepts that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Names and, in the absence of a reply by the Respondent, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The third element of the Policy that the complainant must also demonstrate is that the disputed domain names have been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both of these requirements.
The Panel finds that the evidence in the case shows the Respondent registered and has used the Disputed Domain Names in bad faith.
On the issue of registration, the trademark FORD is such a famous mark for motor vehicles that it would be inconceivable that the Respondent might have registered the Disputed Domain Names without knowing of it (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Ford Motor Company and Ford Motor Credit Company v. Michele Dinoia, WIPO Case No. D2007-0662(“Considering the fame associated with the Trademark FORD in the world, including in Italy, which evidence has not been challenged by the Respondent, it is inconceivable to this Panel that the Respondent was not aware of the existence and fame of at least the Trademark FORD.”); Ford Motor Company v. RegC, Liz Schlumbrecht / Private Registration, 1&1 Internet Inc., WIPO Case No. D2019-1714 (“the FORD trademark is so famous that it is impossible for any respondent to claim that he was unaware of Ford’s prior rights”); Ford Motor Company v. Jon Schwartz, Maurice Schwartz & Sons, Inc, Registration Private, Domains By Proxy, WIPO Case No. D2018-1066, (“the Complainant (has) established fame and notoriety worldwide in the FORD Mark”).
The diversion of Internet users is also a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous UDRP decisions (see L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163, and Hoffmann-La Roche Inc. v. Samuel Teodorek, WIPO Case No. D2007-1814).
Further, a gap of several years between registration of a complainant’s trademark and a respondent’s registration of a disputed domain name (containing the trademark) could constitute in certain circumstances additional evidence of bad faith (see Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415). In the present case, the Respondent registered the Disputed Domain Names over a century after the Complainant first established trademark rights in the FORD mark.
On the issue of use, the uncontested evidence is that the Disputed Domain Name <fordassembler.com> and redirected to a website displaying for sale vehicles manufactured by the Complainant’s competitors Toyota and Honda. This Panel accepts the material demonstrating this conduct as evidence of bad faith use in accordance with paragraph 4(b)(iv) of the Policy.
The Respondent’s use of the Disputed Domain Name <fordplantasonora.com> is apparently unconnected with any bona fide supply of goods or services by the Respondent. This Panel accepts that any commercial use by the Respondent of the Disputed Domain Name <fordplantasonora.com> would blatantly infringe the Complainant’s rights. Numerous previous UDRP panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding (see WIPO Overview 3.0, section 3.3).
The Panel notes that a previous UDRP panel ordered the Disputed Domain Name <fordplantasonora.com> to be transferred to the Complainant having found confusingly similarity to the Complainant’s trademark (see: Ford Motor Company, S.A. de C.V. c. Andrés Romero, Toyota Company, WIPO Case No. D2019-1563). This Panel has no evidence before it that would cause it to disagree with that decision.
The Panel has also considered whether it should draw an adverse inference from the Respondent’s use of a privacy shield. In the circumstances where the Respondent has registered more than one Disputed Domain Name involving the Complainant’s trademark, and provided invalid contact details, it seems reasonable to infer that the main purpose the Respondent has used a privacy service is to cause the Complainant difficulty in identifying other domain names registered by the same registrant (see Ustream.TV, Inc. v. Vertical Axis, Inc., WIPO Case No. D2008-0598; Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647; Süd-Chemie AG v. tonsil.com, WIPO Case No. D2000-0376 (“unsuccessful in its attempt to contact the Respondent by using the contact details in the Registrar’s registry”); Playboy Enterprises International, Inc. v. Tamara Pitts, WIPO Case No. D2006-0675 (“The Respondent’s failure to maintain current contact information with the Registrar also suggests an effort to avoid accountability for misusing a famous trademark, supporting the inference of bad faith”).
This Panel finds that the Respondent has taken the Complainant’s trademark FORD and incorporated it in the Disputed Domain Names without the Complainant’s consent or authorization, for the very purpose of capitalizing on the reputation of the trademark by diverting Internet users. This Panel regards such conduct as prima facie evidence of bad faith use.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of 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 names, <fordassembler.com> and <fordplantasonora.com> be transferred to the Complainant.
Date: February 17, 2021