WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Ford Motor Company v. Servicios Especiales Ltd

Case No. D2021-0510

1. The Parties

The Complainant is Ford Motor Company, United States of America (“United States”), represented by Marval O’Farrell & Mairal, Argentina.

The Respondent is Servicios Especiales Ltd, Argentina, internally represented.

2. The Domain Name and Registrar

The disputed domain name <mi-ford.com> is registered with Name.com, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 18, 2021. On the following day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 22, 2021, 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. The Center sent an email communication to the Complainant on February 25, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same day, the Complainant filed an amended Complaint. The Respondent sent an email communication to the Center on March 1, 2021.

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”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 11, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 31, 2021. The Respondent sent an email communication to the Center on March 12, 2021.

In accordance with the Rules, paragraph 17(a)(i), the Complainant requested the suspension of the proceeding on April 5, 2021. On the following day, the Center confirmed the suspension of the proceeding until May 6, 2021 for the purposes of settlement negotiations. On April 8, 2021, the Respondent sent an email communication to the Center. On May 6, 2021, the Complainant requested the reinstitution of the proceeding. On May 7, 2021, the Center gave notice that the proceeding was reinstituted from that day. On May 7 and May 10, 2021, the Respondent sent email communications to the Complainant and the Center. On May 13, 2021, pursuant to paragraph 6 of the Rules, the Center proceeded to appoint a panel.

The Center appointed Matthew Kennedy as the sole panelist in this matter on June 1, 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 an automotive and mobility company. It designs, manufactures, markets, and services cars, trucks, and sport utility vehicles. It operates in four segments, i.e., automotive, financial services, smart mobility, and central treasury operations. It has manufacturing operations around the world, including in Argentina. The Complainant holds multiple trademark registrations in multiple jurisdictions, including:

- United States trademark registrations numbers 3046210 and 3046211, both for FORD, both registered on January 17, 2006, specifying services in classes 36 and 37, respectively;

- Argentine trademark registration number 2.952.923 for FORD, registered on August 16, 2018, specifying services in class 37; and

- Argentine trademark registrations numbers 2.952.922 and 2.952.924, both for the Ford oval design, both registered on August 16, 2018, specifying services in classes 36 and 37, respectively.

The above trademark registrations remain in effect. The Complainant has also registered the domain name <ford.com> that it uses in connection with a website where it provides information about itself and its products.

The Respondent is ostensibly a company. Its name is composed of two words meaning “Special Services” in Spanish and an indication of limited liability in English. Its contact address is comprised of a location and postcode that do not match. The sender of its email communications does not identify himself or herself. The Respondent remains the registrant of the disputed domain name at the time of this Decision.

The disputed domain name was registered on April 18, 2017. The disputed domain name resolves to a webpage in Spanish that purports to offer financing services for the Complainant’s vehicles at discounted rates. The webpage prominently displays the Complainant’s Ford oval design trademark and photographs of the Complainant’s vehicles. Payment instalment amounts are displayed in ARS (Argentine pesos). The webpage invites Internet users to submit their name, contact details and desired vehicle. The website states that Ford offers personalized advice and displays a button to obtain such advice. The website does not identify any other company as the operator of the website or provider of financing services.

The Registrar confirmed that the Registration Agreement is in English.

5. Parties’ Contentions

A. Complainant

The disputed domain name is identical to the Complainant’s FORD mark.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has never granted the Respondent the ability to operate the disputed domain name, as the only party authorized to use the Complainant’s trademarks in Argentina is it wholly-owned subsidiary Ford Argentina S.C.A., which is the owner of the domain name <ford.com.ar>, among others. There are no contractual agreements such as authorizations or licenses to certify that the Respondent has the right to use the trademark FORD. The Respondent’s website does not disclose its lack of relationship with the Complainant. The website offers consumers a misleading finance plan for the Complainant’s products.

The disputed domain name was registered and is being used in bad faith. The Respondent clearly knew of the Complainant and its rights prior to registration of the disputed domain name. The Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s FORD trademark as to the source, sponsorship, affiliation or endorsement of its website or of products or services on it.

B. Respondent

The website associated with the disputed domain name is for a certain Argentine Ford dealer, not a phishing scheme.

6. Discussion and Findings

6.1 Communications After the Due Date for Response

In accordance with paragraph 5(a) of the Rules, the due date for Response was March 31, 2021. The Respondent sent a series of unsolicited informal email communications to the Center on March 1, March 12, April 8, May 7 and May 10, 2021. The first two communications responded to the Complainant’s contentions while the others exclusively concerned the renewal and potential transfer of the disputed domain name.

The Panel sees no reason to accept the communications filed after the due date for Response as they were not only late but also irrelevant to the Panel’s determinations. Rejection of those late communications will not cause unfairness to either Party. Accordingly, the Panel will take into account the Respondent’s communications sent on March 1 and March 12, 2021 only.

6.2 Substantive Issues

Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:

(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 in respect of 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

Based on the evidence submitted, the Panel finds that the Complainant has rights in the FORD mark.

The disputed domain name wholly incorporates the FORD mark. The disputed domain name also adds, as its initial element, the word “mi“, meaning “my” in Spanish, separated from the mark by a hyphen. The inclusion of these elements does not avoid a finding of confusing similarity as the Complainant’s mark remains clearly recognizable within the disputed domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 1.7 and 1.8.

The only other element in the disputed domain name is a generic Top-Level Domain (“gTLD”) “.com”. As a mere technical requirement of registration, this element is generally disregarded in the comparison between a domain name and a trademark for the purposes of the first element of paragraph 4(a) of the Policy. See WIPO Overview 3.0, section 1.11.

Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or

(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or

(iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The disputed domain name resolves to a website that displays the Complainant’s Ford oval design trademark and photographs of the Complainant’s vehicles. The website purports to offer financing for the Complainant’s vehicles and gives the impression that it is operated by the Complainant. However, the Complainant submits that it has never granted the Respondent the ability to operate the disputed domain name or any licence to use its trademarks.

The Respondent is named in the Registrar’s WhoIs database as “Servicios Especiales Ltd”, not the disputed domain name. There is no evidence that the Respondent has been commonly known by the disputed domain name.

Based on the above evidence, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

Turning to the Respondent’s arguments, it asserts that the disputed domain name resolves to a website for a certain Argentine Ford dealer. The Respondent does not attempt to substantiate that assertion. Nothing on the website refers to that Ford dealer. Nothing on the record indicates that the Respondent is that Ford dealer. Accordingly, the Panel considers that the Respondent has failed to rebut the Complainant’s prima facie case.

Therefore, based on the record of this proceeding, the Panel finds that the Complainant has satisfied the second element in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows:

“(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.”

The disputed domain name was registered in 2017, years after the earlier registrations of the Complainant’s FORD mark. The disputed domain name wholly incorporates the FORD trademark and has resolved since its registration to a website that displays the Ford oval design trademark and photographs of the Complainant’s vehicles. This all gives the Panel reason to find that the Respondent knew of the Complainant and its trademarks at the time that it registered the disputed domain name.

The disputed domain name is used in connection with a website that purports to offer financing for the Complainant’s vehicles. The website displays the Complainant’s Ford oval design trademark and photographs of the Complainant’s vehicles and gives the false impression that it is operated by the Complainant. Given these circumstances and the findings in Section 6.2B above, the Panel considers that the disputed domain name is intended to attract Internet users by creating a likelihood of confusion with the Complainant’s FORD trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of a product or service on that website within the terms of paragraph 4(b)(iv) of the Policy.

Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy.

7. Decision

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 <mi-ford.com> be transferred to the Complainant.

Matthew Kennedy
Sole Panelist
Date: June 9, 2021