WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ford Motor Company v. Sainabou Bojang, AAL Domains
Case No. D2021-1268
1. The Parties
Complainant is Ford Motor Company, United States of America (“U.S.” or “United States”), represented by Phillips Winchester Attorneys at Law, United States.
Respondent is Sainabou Bojang, AAL Domains, United States.
2. The Domain Names and Registrar
The disputed domain names <ford.africa> and <lincoln.africa> (collectively, the “Domain Names”) are registered with Instra Corporation Pty Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 23, 2021. On April 23, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On April 27, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on April 30, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on April 30, 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 Respondent of the Complaint, and the proceedings commenced on May 6, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 26, 2021. Respondent did not submit a formal response. However, the Respondent submitted informal communications to the Center on May 12 and 29, 2021. Accordingly, on May 28, 2021, the Center informed the Parties that it was proceeding with the panel appointment process.
The Center appointed John C. McElwaine as the sole panelist in this matter on June 21, 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
Complainant is a global manufacturer of automobiles.
Respondent is an individual residing in the United States.
Complainant is the owner of the following trademark registrations, among others, alleged to be relevant to this matter:
- FORD, U.S. Reg. No. 74,530, registered on July 20, 1909, for automobiles and their parts.
- LINCOLN, U.S. Reg. No. 511,662, registered on June 29, 1949, for motor cars.
On April 27, 2021, the <ford.africa> Domain Name was registered with the Registrar. This disputed domain name does not resolve to an active website.
On April 27, 2021, the <lincoln.africa> Domain Name was registered with the Registrar. This disputed domain name resolves to a website offering the domain names for sale.
5. Parties’ Contentions
As background, Complainant alleges that it was founded under the name Ford Motor Company in 1903 and is a global automotive industry leader. Complainant manufactures or distributes automobiles in approximately 200 markets across six continents, with over 150,000 employees and over 100 plants worldwide. Complainant alleged that the FORD trademark is among the best-known and highly-regarded trademarks in the world. Complainant asserts that, since 1895 it has continuously used the FORD trademark in connection with automobiles and automobile parts and accessories and that the FORD trademark is well-known, if not famous, in many places around the world, including in Africa. Complainant points out that FORD was listed in Interbrand’s 2020 annual survey of the “100 Most Valuable Global Brands” as the 42nd most valuable brand in the world.
Complainant alleges that it has used the LINCOLN trademark in connection with luxury vehicles since 1922, when Complainant purchased the Lincoln Motor Company. Complainant alleges that LINCOLN is also well-known worldwide. Complainant asserts that it operates official websites on the domain names <lincoln.com> and <lincolnway.com>.
With respect to the first element of the Policy, Complainant asserts that it has obtained registrations in the U.S. and worldwide for the FORD trademark and LINCOLN trademark, including in jurisdictions in Africa. Complainant attached to the Complaint as Exhibit H, registered or pending application for the FORD and LINCOLN trademarks in countries located in Africa, including Algeria, Angola, Botswana, Egypt, Ethiopia, Gambia, Lesotho, Libya, Madagascar, Morocco, and South Africa. Complainant asserts that <ford.africa> and <lincoln.africa> are identical to Complainant’s FORD and LINCOLN trademarks.
With respect to the second element of the Policy, Complainant asserts Respondent has no legitimate rights in the Domain Names because Respondent is not known by the Domain Names, has not been authorized by Complainant to use the FORD trademark or LINCOLN trademark and Respondent has no connection or affiliation with Complainant. Complainant also alleges that Respondent has never used <ford.africa> and has used <lincoln.africa> only to advertise this domain name, and other domain names comprised of famous trademarks, for sale. Complainant also points out that <ford.africa> is advertised for sale on the webpage that resolves from <lincoln.africa>.
With respect to the third element of the Policy, Complainant contends that given the strength and fame of the FORD trademark and LINCOLN trademark, Respondent’s bad faith is established by the fact of Domain Names’ registration alone. Complainant asserts that the FORD trademark and LINCOLN trademark fall within a select class of internationally strong marks that have become so famous that it is impossible for any respondent to claim that it was unaware of Complainant’s prior trademark rights. Respondent further contends that knowledge of its FORD trademark and LINCOLN trademark can be presumed by virtue of its United States trademark registrations for these marks.
Complainant also contends that the content displayed on the <lincoln.africa> homepage (and on the homepages of many similar websites operated by Respondent), demonstrates that Registrant understands that the FORD trademark and LINCOLN trademark are Ford’s “brand names”. Complainant asserts that Respondent registered the Domain Names intending to trade on their trademark value, which is evidenced by such text, which amounts to a ransom note. Complainant points out that Respondent specifically refers to the importance of domain names to “global companies”, asserts that sophisticated or advanced trademark owners have already purchased their “.africa” domain names, and then lists the serious harms that may result when a domain name comprised of a famous trademark is in the hands of an unauthorized person or entity. Complainant further contends that Registrant’s awareness of the Domain Names’ trademark significance is further established by the number of domain names Complainant contends Respondent has registered incorporating famous trademarks and, specifically, famous automotive trademarks.
Complainant addresses Respondent’s statement on the <lincoln.africa> homepage that the domain name was “originally intended for a fanbase” by asserting that this claim is pretextual. Complainant asserts that the same statement appears on each of the nearly-identical websites operated by Respondent. Lastly, Complainant asserts that Respondent’s conduct in offering to sell the Domain Names in excess of Respondent’s out-of-pocket cost is evidence of Respondent’s bad faith.
Respondent did not substantively reply to Complainant’s contentions. However, on May 12 and 29, 2021, Respondent submitted informal communications asking about the UDRP procedure and offering to discuss settlement, but otherwise did not substantively reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4 of the Policy requires that, in order to succeed in this UDRP proceeding, Complainant must still prove its assertions with evidence demonstrating:
(i) the Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) the Domain Names have been registered and are being used in bad faith.
Noting the lack of substantive response, the Panel may accept as true the reasonable factual allegations stated within the Complaint and may draw appropriate inferences therefrom. See St. Tropez Acquisition Co. Limited v. AnonymousSpeech LLC and Global House Inc., WIPO Case No. D2009-1779; Bjorn Kassoe Andersen v. Direction International, WIPO Case No. D2007-0605; see also paragraph 5(f) of the Rules (“If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint”). Having considered the Complaint, the Policy, the Rules, the Supplemental Rules and applicable principles of law, the Panel’s findings on each of the above cited elements are as follows.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires Complainant show that the Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights. Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2. On this point, Complainant has provided evidence that it is the owner of multiple trademark registrations for both the FORD trademark and LINCOLN trademark. The Panel finds that Complainant owns valid trademark rights in the FORD trademark and LINCOLN trademark, and that said rights long predate the registration of the Domain Names.
The Domain Names are identical to the FORD trademark and LINCOLN trademark, but for the Top-Level Domain (“TLD”) “.africa”. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark. Advance Magazine Publishers Inc. v. Lola Joseph, Vogue Africa, WIPO Case No. D2016-2556, citing, PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No. D2003-0696).
Accordingly, the Panel finds that the Domain Names, <ford.africa> and <lincoln.africa>, are identical or confusingly similar to Complainant’s FORD trademark and LINCOLN trademark in which Complainant has valid trademark rights. Therefore, Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Under the Policy, paragraph 4(a)(ii), Complainant has the burden of establishing that Respondent has no rights or legitimate interests in the Domain Names. Complainant need only make a prima facie showing on this element, at which point the burden of production shifts to Respondent to present evidence that it has rights or legitimate interests in the Domain Names. If Respondent has failed to do so, Complainant is deemed to have satisfied its burden under paragraph 4(a)(ii) of the Policy. See Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc., WIPO Case No. D2010-1141; see also Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415; Inter-Continental Hotels Corporation v. Khaled Ali Soussi, WIPO Case No. D2000-0252.
The Policy, paragraph 4(c), provides a non-exhaustive list of circumstances in which a respondent could demonstrate rights or legitimate interests in a contested domain name:
“(i) before any notice to you 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 (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 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.”
With respect to Complainant’s contention that Respondent is not commonly known by the Domain Names, the Panel notes that the unredacted WhoIs information lists Respondent as “Sainabou Bojang, AAL Domains” and the Panel, therefore finds, based on the record and the lack of evidence otherwise, that Respondent is not commonly known by the Domain Name. See Moncler S.p.A. v. Bestinfo, WIPO Case No. D2004-1049 (“the Panel notes that the Respondent’s name is ‘Bestinfo’ and that it can therefore not be ‘commonly known by the Domain Name’”).
Complainant also contends that it has never licensed or otherwise provided authorization for Respondent to use the FORD or LUNCOLN trademark. This is an assertion which has not been denied by Respondent.
In this matter, Complainant has presented evidence that Respondent is holding both Domain Names for the prupose of resale. Complainant further argues that Respondent is not actively using the Domain Names in connection with a bona fide offering of goods or services and that Respondent is not making a legitimate noncommercial or fair use of the Domain Name, as evidenced by the fact that the <lincoln.africa> domain name resolves to a website where the Domain Names are being offered for sale as “Premium Domains” and at prices that far exceeds Respondent’s reasonable out-of-pocket expenses in connection with the original acquisition of the Domain Names.
The content of the <lincoln.africa> website (the “Website”) establishes a “Premium Domain” scheme to target famous brands. The Website contends that other well-known companies have purchased “.DotAfrica” domain names for trademark protection and Internet security purposes and to “avoid significant financial penalties”.
The Website further states that the price of the domain name listed for sale will increase daily if not purchased: “THIS PRICE INCREASES $50 EVERY DAY STARTING 01/01/21”. Important to the analysis of whether Respondent is making a bona fide use of the Domain Names is that there is no evidence that Respondent registered the Domain Names to use them for a legitimate, noncommercial purpose. The Panel recognizes that both “Ford” and “Lincoln” are surnames and that a legitimate use for these Domain Names could be imagined. However, there is no evidence that Respondent intends to make a bona fide use of the Domain Names. Instead, the evidence shows that Respondent has targeted Complainant, as well as other famous brands that are unique source indicators, including XBOX, ACURA, UBER EATS, CHEVROLET and MASERATI. This is evidence of an overarching intent to target famous brand-owners.
Here, Respondent’s only use of the Domain Names has been to scheme to sell the Domain Names to Complainant for an amount far exceeding Respondent’s out of pocket expenses. An offer to sell a domain name for an amount exceeding the respondent’s out of pocket expenses has been found not to be a bona fide use of the disputed domain name provided that profiting from the complainant’s mark was evident. Express Scripts, Inc. v. TheSonicNet, WIPO Case No. DCO2010-0010; Groupon, Inc. v. Whois Privacy Corp. / Ryan G Foo, PPA Media Services, WIPO Case No. D2014-2139.
The Website indicates that <lincoln.africa>, and other domain names associated with Respondent, may be intended to be sold for use a fan site. However, there is no evidence that Respondent intends to operate a collection of fan sites, and relevant here, a Ford or Lincoln vehicle fan site. Moreover, in this instance, the alleged fan sites would be using domain names identical to the famous FORD trademark and LINCOLN trademark, which would not likely be a bona fide use. WIPO Overview 3.0, section 2.7.2 (“Where a domain name which is identical to a trademark (i.e., <trademark.tld>) is being used in relation to a genuine noncommercial fan site, panels have tended to find that a general right to operate a fan site (even one that is supportive of the mark owner) does not necessarily extend to registering or using a domain name that is identical to the complainant’s trademark, particularly as the domain name may be misunderstood by Internet users as being somehow sponsored or endorsed by the trademark owner.”) Furthermore, the nature of the Domain Names, being identical to Complainant’s trademarks, carries a high risk of implied affiliation. See WIPO Overview 3.0, section 2.5.1.
Although Respondent has been properly notified of the Complaint by the Center, Respondent failed to submit any response on this point. The silence of a respondent may support a finding that it has no rights or legitimate interests in respect of the domain name. See Alcoholics Anonymous World Services, Inc., v. Lauren Raymond, WIPO Case No. D2000-0007; Ronson Plc v. Unimetal Sanayi ve Tic.A.S., WIPO Case No. D2000-0011. Additionally, previous UDRP panels have found that when respondents have not availed themselves of their rights to respond to complainants, it can be a further inference in appropriate circumstances that respondents have no rights nor legitimate interests in the domain name at issue. See AREVA v. St. James Robyn Limoges, WIPO Case No. D2010-1017; Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim, WIPO Case No. D2003-0269.
In sum, Complainant has made a prima facie showing that Respondent lacks any rights or legitimate interests in the Domain Name and the Panel finds, on balance based on the evidence of record, that Respondent has not rebutted Complainant’s prima facie showing. Accordingly, the Panel finds that the second element of the Policy is established by Complainant, and Respondent has no rights or legitimate interests in respect of the Domain Name, pursuant to the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, Complainant must show that Respondent registered and is using the Domain Name in bad faith. A non-exhaustive list of factors constituting bad faith registration and use is set out in paragraph 4(b) of the Policy.
As an initial matter, paragraph 4(b)(i) of the Policy indicates that bad faith exists where a respondent acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name. Here, the evidence establishes the purpose of Respondent registering the Domain Names was to sell it to Complainant and that the prices for the Domain Names far exceeded Respondent’s out of pocket expenses. As discussed above, the content of the Website establishes this intent. See UK lnsurance Limited v. PrivacyDotlink, Customer 28001 118 / Futureproof Domains, WIPO Case No. D2017-1584 (finding bad faith where respondent linked the domain name to form “for sale” webpage, demanded USD 500 for the domain name and threatened to raise the price for such sale by USD 100 every day an offer was not accepted).
With respect to <ford.africa>, which does not resolve to an active webpage, such passive holding may still be in bad faith. When a domain name is being passively held, the question of bad faith use does not squarely fall under one of the aforementioned non-exhaustive factors set out in paragraph 4(b) of the Policy. The three member panel, in Magazine Publishers Inc. and Les Publications Conde Nast S.A. v. ChinaVogue.com, WIPO Case No. D2005-0615, made the following observations in its determination that the respondent was acting in bad faith:
(i) the complainant’s trademark has a strong reputation and is widely known, as evidenced by its substantial use in the United States of America and in other countries;
(ii) the respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name;
(iii) the respondent registered the domain name in 1999, and seems not to have been using the domain name;
(iv) the respondent did not reply to the complainant’s communications before the proceedings; and
(v) the respondent did not reply to the complainant’s contentions.
Similarly, in this matter, Complainant is the owner of the famous FORD trademark that is registered worldwide, including inter alia a registration in the United States where Respondent resides. Respondent did not respond to the Complaint and has provided no evidence of its intended use of the <ford.africa> Domain Name. In fact, Respondent is not using the Domain Names in any manner to demonstrate a bona fide use or a potential of bona fide use. The Panel finds that Respondent’s passive holding of the <ford.africa> satisfies the requirement of paragraph 4(a)(iii) of the Policy that the Domain Names are being used in bad faith by Respondent.
In conclusion, the Panel holds that Complainant has met its burden of showing that Respondent registered and is using the Domain Names in bad faith.
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, <ford.africa> and <lincoln.africa>, should be transferred to Complainant.
John C McElwaine
Date: July 5, 2021