WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Ford Motor Company v. Proxy Protection LLC / Marcus Dawson, AutoGuard, LLC

Case No. D2021-3430

1. The Parties

Complainant is Ford Motor Company, United States of America (“United States”), represented by Phillips Winchester, United States.

Respondent is Proxy Protection LLC, United States / Marcus Dawson, AutoGuard, LLC, United States, represented internally.

2. The Domain Name and Registrar

The disputed domain name <fordextendedautowarranty.com> (the “Domain Name”) is registered with DreamHost, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 15, 2021. On October 18, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 18, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on October 20, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on October 25, 2021.

The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on October 28, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 17, 2021. On November 16, 2021, Respondent filed a request to extend the Response due date by additional four calendar days. The Center confirmed on the following day that in accordance with paragraph 5(b) of the Rules, the due date for Response was extended to November 21, 2021. The Response was filed with the Center on November 22, 2021.

The Center appointed Christopher S. Gibson as the sole panelist in this matter on January 7, 2022. 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 was founded in 1903 and is a global automotive industry leader, manufacturing and distributing automobiles in approximately two hundred markets across six continents, with over 180,000 employees and over one hundred plants worldwide.

Complainant owns and has continuously used the FORD trademark, which is among the best-known trademarks in the world. See e.g., Ford Motor Company v. Ignat, BuyThisDomain (icq 745770), WIPO Case No. D2007-1326 (“There is no doubt that the trademark FORD is famous, and that consumers around the globe associate it with automobiles produced by Complainant.”). FORD is currently ranked as the 42nd most valuable brand in the world on Interbrand’s annual survey of the “100 Most Valuable Global Brands”. ¹

Complainant obtained its first United States trademark registration for FORD in 1909 (United States Reg. No. 0074530), and Complainant currently has many registrations in the United States and worldwide for the FORD mark and for marks that incorporate the FORD sign. Complainant has used its iconic FORD blue oval design trademark continuously since at least as early as 1966.

Complainant sells a wide range of financial services and vehicle protection programs. New vehicles come with new vehicle limited warranties. In addition, through its wholly owned subsidiary, Ford Motor Credit Corporation, Complainant sells extended vehicle service contracts for new and pre-owned Ford vehicles under the registered trademark FORD PROTECT, including prepaid service contracts for routine maintenance, roadside assistance, and extensive component coverage. Complainant advertises these plans on websites including “www.ford.com” and “www.fordprotect.ford.com”. Complainant also provides limited warranty coverage for certain used vehicles under the trademark FORD BLUE ADVANTAGE. Complainant advertises these used vehicle warranty plans on websites including on “www.ford.com”.

Respondent registered the Domain Name on December 17, 2020. Respondent uses the Domain Name to host a website advertising “Ford Extended Auto Warranty Plans.” Respondent features Complainant’s FORD blue oval design trademark on its homepage, together with copyrighted Ford auto images, copied from Complainant’s marketing materials. As reflected on the webpages, the website operator identifies itself both as “Ford Auto Warranty” and “Ford Extended Auto Warranty,” and in other instances as “Titan Auto Warranty.”

On July 16, 2021, Complainant sent a demand letter to Titan Auto Finance, LLC, objecting to its use of the Domain Name and to operation of a website that advertised a vehicle protection plan that appeared to be coming from Complainant. No mailing address for Titan Auto Warranty is shown on the website linked to the Domain Name. A hyperlink on the “About Us” webpage resolves to a Facebook page for Titan Auto Warranty. That Facebook page refers to Titan Auto Warranty’s website at “www.titanautowarranty.com,” and displays an image of the homepage for the website linked to the Domain Name. While no entity with the name of Titan Auto Warranty is registered with the New Mexico Secretary of State, Titan Auto Finance, LLC is registered and has a functionally identical postal address. Accordingly, Complainant addressed the demand letter to Titan Auto Finance, LLC.

On July 29, 2021, “Titan Auto Warranty” responded, stating that it has no relationship or access to the website linked to the Domain Name. Complainant’s counsel replied on July 29, 2021, clarifying that Complainant had objected to Respondent’s use of the Domain Name, listing items of evidence demonstrating that Titan Auto Finance was the website operator and reiterating Complainant’s demand that Respondent stop using the Domain Name, refrain from using Complainant’s FORD blue oval design trademark, and correct other alleged infringements on the website that may cause consumers to erroneously conclude that Respondent’s extended warranty contracts come from Complainant or are endorsed by or related to Complainant. Respondent replied, reiterating, “We are not titan auto finance? [sic].” Complainant’s counsel asked to be put in communication with Respondent’s principal, Marcus Dawson, and his request was ignored and then, on August 9, 2021, refused. Respondent continues to use the Domain Name to host a website advertising “Ford Extended Auto Warranty Plans” that appear to be coming from Complainant.

5. Parties’ Contentions

A. Complainant

(i) Identical or confusingly similar

Complainant states that the Domain Name incorporates Complainant’s famous FORD trademark in the phrase “Ford Extended Auto Warranty,” a confusingly similar variant of the name used by Complainant for its vehicle protection plan, namely, “Ford Protect Extended Service Plans.” Complainant contends that the fact a domain name wholly incorporates a complainant’s trademark is sufficient to establish identity or confusing similarity for the purpose of the Policy. A domain name including a trademark will naturally be associated with the trademark owner. That association is not extinguished by the addition of words or terms related to the trademark owner, and, in many cases, the addition of such terms only increases the likelihood that the public will associate the domain name with the trademark owner. Complainant submits that this principle is applicable here, as the terms “extended,” “auto” and “warranty” are all very strongly associated with Complainant.

(ii) Rights or legitimate interests

Complainant states that as reflected on the website linked to the Domain Name, the website operator identifies itself both as “Ford Auto Warranty” and “Ford Extended Auto Warranty,” and, in other instances and less prominently, as “Titan Auto Warranty.” Based on the website, a visitor would likely conclude that Titan Auto Warranty was a distributor of “Ford Extended Auto Warranty Plans,” in the same way that Complainant’s auto dealers are distributors of Ford automobiles.

Complainant states that regardless of Respondent’s true identity, Respondent is not authorized to use the FORD marks in connection with the Domain Name, to display Complainant’s copyrighted marketing materials, or to represent Complainant in any capacity, including as a reseller or distributor of vehicle protection programs.

Respondent has used the Domain Name only to host a website that appears to be operated by Complainant or that appears to be offering a Ford warranty plan. Complainant’s iconic FORD blue oval design trademark is prominently displayed on Respondent’s website, as are numerous copyrighted Ford vehicle images lifted from Complainant’s own marketing materials. Complainant contends such use is not legitimate and cannot establish rights or legitimate interests.

Complainant states it does not dispute the rights of independent vehicle service contract providers to use FORD trademarks to describe their products or to identify the Ford vehicles that their contracts cover. But limited “referential” use, in text on a website, is one thing. Making the mark the dominant feature of a web address, the first thing an Internet user sees and the means of attracting Internet users, is quite another. Complainant contends that Respondent’s use of FORD grossly exceeds the boundaries of permissible fair use. As Complainant explained in its demand letter to Respondent:

“Ford is concerned that your customers and the public will be confused and misled into believing that your business is sponsored, endorsed, licensed, or otherwise affiliated with Ford, when it is not. To be clear, Ford does not object to your business offering legitimate services in connection with Ford’s products, nor does Ford object to you referencing Ford by name to identify Ford products with which your services are offered. However, you feature the Ford Marks and images of Ford vehicles under a domain name that is comprised of the FORD mark such that Ford and its products are the sole focus of the website. Furthermore, you have incorporated the Ford Marks into the overall design of the website in ways that create or imply an affiliation between your business and Ford when none exists. Your use of a disclaimer on the website does not dispel the likelihood of confusion that results from your unauthorized use of the Ford Marks as described herein.”

Complainant argues that Respondent’s use does not satisfy the criteria applied by UDRP panels to assess claims of fair use by an unauthorized reseller of genuine products. In determining whether an unauthorized reseller’s use of a domain name constitutes a bona fide offering of goods or services, Complainant states that panels apply the “Oki Data”criteria as the “minimum” requirements that must be satisfied before a use may be considered bona fide. ² Complainant submits that each of the cumulative requirements, considered below, must be satisfied:

(i) “the respondent must actually be offering the goods or services at issue.” Whether Respondent satisfies this criterion is unknown, as the apparent website operator, Titan Auto Finance, LLC, doing business as Titan Auto Warranty, categorically denies have anything to do with the website.

(ii) “the respondent must offer only those goods or services in connection with the disputed domain name.” Based on the website, Respondent appears to satisfy this criterion. Whether Respondent actually satisfies this criterion is unknown.

(iii) “the respondent must accurately and prominently disclose the registrant’s relationship with the trademark owner.”Respondent’s use does not satisfy this criterion. If Titan Auto Finance LLC’s response to the demand letter is accepted as true, Respondent is falsely identifying itself as Titan Auto Warranty. While the website includes a disclaimer, nowhere is Respondent’s true identity stated or the relationship between its product and Complainant explained. Moreover, Respondent’s use of trade names, namely, “Ford Auto Warranty” and “Ford Extended Auto Warranty”, comprised in unique and primary part of Complainant’s trademarks, negates any contention that the Domain Name is being used fairly or descriptively. Respondent’s use of the trade names “Ford Auto Warranty” and “Ford Extended Auto Warranty” negates any claim of descriptive use.

(iv) “the respondent must not have attempted to ‘corner the market’ in all relevant domain names that reflect the trademark.” As Respondent’s true identity is unknown, analysis of this criterion is not possible.

Complainant states that even when each of the “Oki Data” principles are satisfied, a registration can nonetheless be illegitimate where confusion arises by a simple comparison between the complainant’s trademark and the disputed domain name. Complainant contends such is the case here, where the Domain Name consists in primary part of Complainant’s world-famous FORD trademark and will be interpreted by the public as referring to a warranty product that comes from or is endorsed by Complainant, when it is not.

Aside from Respondent’s registration and use of the Domain Name, Complainant has found no evidence of any person or entity using the names “Ford Auto Warranty” and “Ford Extended Auto Warranty” as trade or business names, and any such use would infringe and dilute the FORD marks, as Complainant has the exclusive right to use FORD in connection with autos and auto protection plans. Thus, Respondent cannot claim or establish any legitimate interest in the Domain Name.

(iii) Registered and used in bad faith

Complainant contends that many factors demonstrate Respondent’s bad faith pursuant to the Policy. Given the strength and fame of the FORD marks, Respondent’s bad faith is established by the fact of registration alone. FORD falls within a select class of internationally strong marks that have become so famous that it is impossible for any respondent to claim he was unaware of Complainant’s prior rights. Respondent’s awareness of the FORD trademark may also be inferred because the trademark was registered with the United States Patent and Trademark Office (“USPTO”) prior to Respondent’s registration of the Domain Name and since the FORD trademark is well-known and famous. Indeed, Respondent’s use of the Domain Name to host a website displaying Complainant’s unique design trademarks, copyrighted auto images, and numerous references to Complainant, including doing business as a trade or legal name comprised of Complainant’s famous FORD trademark, conclusively proves Respondent was aware of the trademark significance of the Domain Name.

Complainant submits the fact that Respondent was aware of Complainant and intended to benefit from the value of the FORD marks is irrefutably demonstrated by Respondent’s use of the Domain Name to compete with Complainant in the sale of vehicle protection plans.

Complainant contends that Titan Auto Finance, LLC’s response to Complainant’s demand letter also provides evidence of Respondent’s bad faith. If the assertions made by Titan Auto Finance, LLC are true and it has nothing to do with the registration or use of the Domain Name, then Respondent is deliberately misleading visitors by conveying that Titan Auto Warranty is operating the website or affiliated with it. If the assertions made in the response are not true and Titan Auto Finance, LLC actually is responsible for the Domain Name’s registration and use, then Respondent is acting in bad faith by denying such involvement and attempting to mislead Complainant. Any of these circumstances, whether alone or in combination, is sufficient to justify a finding that Respondent has acted in bad faith.

B. Respondent

Respondent submitted a Response, which appeared to be only partially completed. The Response emphasizes the following – that the website: (i) has “clearly identified brand as TITAN” and the “Ford name and images are used to simply identify for the consumer their make and model for selection for a valid quote,” and (ii) “clearly states Titan Auto Warranty” and “clearly states Titan Auto Warranty and clear legal DISCLOSURE IN PLAIN ENGLISH.”

6. Discussion and Findings

To succeed on its Complaint, Complainant must demonstrate that the three elements set forth in paragraph 4(a) of the Policy have been satisfied. These elements are that:

(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) Respondent has registered and is using the Domain Name in bad faith.

A. Identical or Confusingly Similar

The Panel finds that Complainant has well-established rights in its globally well-known FORD trademark, based on its long and widespread use of the mark in commerce in the United States and elsewhere, and through its numerous trademark registrations for the FORD mark and for other trademarks that include the FORD trademark. See e.g., Ford Motor Company v. Domain Administrator, Fundacion Privacy Services LTD, WIPO Case No. D2019-0043.

Further, the Panel determines that the Domain Name is confusingly similar to the FORD mark, as the Domain Name incorporates the mark in its entirety, while adding the descriptive words “extended,” “auto” and “warranty”. The FORD mark is clearly recognizable in the Domain Name, and the other words are descriptive of a particular service offering (i.e., an extended auto warranty) in connection with the FORD mark. The added terms do not prevent a finding of confusing similarity. See WIPO Overview 3.0, section 1.8.

Accordingly, the Panel finds that the Domain Name is confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Regarding the second element of the Policy, WIPO Overview 3.0, section 2.1, states that “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”

Here, the Panel determines that Complainant has made out a prima facie case, while Respondent has failed to rebut Complainant’s contentions. The Panel finds that Complainant has not authorized Respondent to use its FORD trademark; that Respondent is not commonly known by the Domain Name; that Respondent has not used the Domain Name for a legitimate noncommercial or fair use, nor used it in connection with a bona fide offering of goods or services – instead, the Domain Name has been used to host a website that appears to impersonate Complainant or seeks to create a misleading impression of association with Complainant and to be offering a warranty plan from Complainant. Complainant’s iconic FORD blue oval design trademark is prominently displayed on Respondent’s website, as are numerous copyrighted Ford vehicle images, copied directly from Complainant’s marketing materials without authorization. While Respondent claims these Ford vehicle images “are used to simply identify for the consumer their make and model for selection for a valid quote”, the Panel finds that use does not give rise to rights or legitimate interests in the Domain Name per se. The Panel notes that the use of Complainant’s Ford vehicle images, along with the prominent use of the FORD design trademark, on a website at the Domain Name (noting the composition of the Domain Name), are elements that may serve to increase the likelihood that Internet users will associate the Domain Name with Complainant.

Complainant makes clear that it does not dispute the rights of independent vehicle service contract providers to use FORD trademarks to describe their products or the vehicles that their contracts cover. However, a review of the website linked to the Domain Name demonstrates that Respondent’s use of the FORD mark and materials far exceeds the boundaries of permissible fair use. While rendered under a different policy, noting the similarities, the Panel finds that the case, Google Inc. v. Q Interactive Pty Ltd / Mr. Victor Quinteros, WIPO Case No. DAU2012-0026, is instructive on this point. There, the respondent claimed to be using Google’s ANDROID mark descriptively in the domain name <andriodappstore.com.au>, which was used to host a website selling apps that were interoperable with Google’s Android platform. The panel found that the respondent’s display of the heading or title “Android™ apps store” on the website evidenced use in the manner “namely, where the word “android” functions as a trademark rather than as a descriptive name.” The panel further explained that the location of the trademark at the beginning of the disputed domain name, just as is the case here with the placement of the FORD mark at the beginning of the Domain Name, “emphasized its trademark function over its nominative function.” The Panel determines that Respondent’s use of the Domain Name in this manner does not give rise to any right or legitimate interest in it.

The Panel also finds that the analysis in General Motors LLC v. Domains By Proxy, Inc / Mel Light, WIPO Case No. D2012-1415, is relevant. There, the panel found that the respondent there had no rights or legitimate interests under circumstances similar to those in this case:

“Motor vehicle manufacturers routinely offer their own extended warranty services and Internet users encountering a website linked to a domain name such as <gmcextendedwarranty.com>, <gmextendedwarranty.com>, <buickextendedwarranty.com>, or <cadillacextendedwarranty.com> might reasonably assume, in the absence of an express indication to the contrary, that the entity behind the website was in fact the vehicle manufacturer or a company related to or authorized or approved by it. In this case, the prominent use of the Complainant’s branding on the linked website, the vanishingly small disclaimers and the absence of any indication as to the entity behind the websites either reinforces that assumption, or does little to cause a visitor to question it. In this Panel’s view, the Respondent’s offer of services using domain names that are confusingly similar to the Complainant’s trademarks clearly has the potential to mislead Internet users to the Respondent’s advantage, since some visitors might be led to take out an extended warranty from the Respondent in the mistaken belief that they are dealing with an entity that is in some way connected with or endorsed by the Complainant.”

Accordingly, the Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in respect of the Domain Name, which has not been adequately rebutted by Respondent. The Panel therefore concludes that Complainant has established the second element of the Policy in accordance with paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

The third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondent registered and is using the Domain Names in bad faith. WIPO Overview 3.0, section 3.1, states, “bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark.”

Here, the Panel determines that the Domain Name was registered and is being used in bad faith. Based on the evidence, there is little doubt that Respondent was aware of Complainant and its well-known FORD mark, and intentionally targeted that mark, when it registered the Domain Name. The FORD mark falls within a select class of internationally strong marks that have become so famous that it is virtually impossible for any respondent to claim that it was unaware of Complainant’s prior rights. See, e.g., Ford Motor Company v. Jon Schwartz, Maurice Schwartz & Sons, Inc, Registration Private, Domains By Proxy, WIPO Case No. D2018-1066 (“The continuous and public use of the FORD Mark would make it disingenuous for the Respondent to claim that it was unaware that the registration of the Disputed Domain Name would interfere with the Complainant’s rights.”); Ford Motor Company v. RegC, Liz Schlumbrecht / Private Registration, 1&1 Internet Inc., WIPO Case No. D2019-1714 (“The panel agrees with the Complainant’s contention that the FORD trademark is so famous that it is impossible for any respondent to claim that he was unaware of Ford’s prior rights.”). The Panel observes that Respondent registered the Domain Name, which incorporates Complainant’s distinctive FORD mark in its entirety, along with the descriptive words “extended,” “auto” and “warranty.” Given the fame of the FORD trademark and the fact that the Domain Name is so obviously connected with Complainant’s mark, the Panel considers that the only logical conclusion is that Respondent targeted Complainant and its FORD mark when registering the Domain Name.

This point is further confirmed by Respondent’s use of the Domain Name in connection with a website that impersonates Complainant or seeks to create a misleading impression of association with Complainant. Respondent has - at a minimum - been evasive about who is responsible for the website linked to the Domain Name. Moreover, Respondent’s website – prominently displaying Complainant’s iconic FORD blue oval design trademark, as well as copyrighted Ford vehicle images copied without authorization from Complainant’s own marketing materials – is used in a manner that would suggest to a visitor that it is either operated by Complainant, or at least by a company that is an authorized distributor of Complainant’s products. While the website includes a disclaimer, nowhere is Respondent’s identity stated. In addition, noting the composition of the Domain Name and the prominent use of the FORD design trademark on the website, the Panel finds that such a disclaimer is not sufficient to avoid the likelihood of confusion with the Complainant’s trademark. See, e.g., Ford Motor Company v. Registration Private, Domains By Proxy, LLC / Sunita Kulkarni, Danox Apps LLP, Case No. D2020-3019 (transferring <ford-india.com> and finding bad faith registration and use “in view of the reproduction of the famous FORD trademark, as well as the webpage resolving from the disputed domain name, together with the unauthorized reproduction of Complainant’s official marketing materials, and product images, which create a likelihood of confusion with the Complainant’s marks”); and although under a different policy, noting the similarities of the cases, the Panel will refer to Bayerische Motoren Werke AG v. Vatandoust Institute, WIPO Case No. DIR2016-0001 (transferring <bmwservice.ir> and finding bad faith based on use of domain name to host “a commercial website that passes itself off as being operated or authorized by the Complainant,” including though display of BMW’s copyrighted images). Respondent also uses the Domain Name in this case to compete with Complainant in the sale of vehicle protection plans. See American Honda Motor Co., Inc. v. Wayne Craig / GMGL Marketing Services Inc., WIPO Case No. D2014-1845 (transferring domain names <acuraextendedwarranties.com> and <hondaextendedwarranties.com> and finding bad faith because “Respondent is trading on the goodwill of Complainant’s trademarks to attract Internet users, presumably for Respondent’s own commercial gain,” to websites offering competing vehicle protection plans).

In conclusion, in this case, where Respondent submitted a barely intelligible Response to Complainant’s contentions, and for all the reasons discussed above, the Panel determines that the Domain Name was registered and is being used in bad faith. Accordingly, Complainant has satisfied the third element 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 Domain Name, <fordextendedautowarranty.com>, be transferred to Complainant.

Christopher S. Gibson
Sole Panelist
Date: February 20, 2022

¹ Available at “https://interbrand.com/best-brands/”.