WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Ford Motor Company v. Advert Online

Case No. D2018-1839

1. The Parties

The Complainant is Ford Motor Company of Dearborn, Michigan, United States of America (“United States”), represented by Phillips Ryther & Winchester, United States.

The Respondent is Advert Online of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).

2. The Domain Name and Registrar

The disputed domain name <lincolnnavigator.com> (the “Disputed Domain Name”) is registered with Rebel.com Corp. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 11, 2018. On August 13, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 14, 2018, 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 August 16, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 5, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 7, 2018.

The Center appointed Jacques de Werra as the sole panelist in this matter on September 17, 2018. 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 was founded in 1903 and is a global automotive industry leader which manufactures or distributes automobiles in 200 markets across six continents, with approximately 260,000 employees and 100 plants worldwide.

The Complainant has used LINCOLN in connection with luxury vehicles since 1922, when it purchased the Lincoln Motor Company in order to develop a luxury division, and has obtained registrations for LINCOLN and marks that incorporate LINCOLN around the world (the “LINCOLN Trademark”). Among Ford’s active United States registrations for LINCOLN, the first was registered on June 28, 1949 (United States Reg. No. 511,662 claiming a first use in commerce in 1920).

The Complainant has used NAVIGATOR as the name of a full-size, luxury car (Lincoln Sport Utility Vehicle (“SUV”)) since 1997. The Complainant obtained its first United States trademark registration for NAVIGATOR for use in connection with motor vehicles and their structural parts in 1997 (United States Reg. No. 2,111,095 registered on November 4, 1997) and has since obtained additional registrations for NAVIGATOR and trademarks that incorporate NAVIGATOR (the “NAVIGATOR Trademark”; the “LINCOLN Trademark” and the “NAVIGATOR Trademark” being called together the “Trademarks”).

The Complainant operates an official website in connection to the domain name <lincoln.com>.

By letter of April 2, 2018, the Complainant has (by its counsel) sent a cease-and-desist letter to the Respondent requesting the transfer of the Disputed Domain Name to the Complainant by April 6, 2018. The Respondent has not reacted to this letter. On April 9, 2018, the Complainant’s counsel sent a follow-up email to the Respondent, asking for a response to its letter by April 12, 2018. The Respondent did not respond to that email either.

The Respondent registered the Disputed Domain Nameon June 1, 2001. The Complainant alleges to have learned of the Respondent’s registration in the spring of 2018. At that time, the Respondent used the Disputed Domain Nameto resolve to a webpage at “www.landroverusa.com”advertising Range Rover SUVs - luxury SUVs sold in direct competition with the Lincoln Navigator. Currently, the Disputed Domain Name resolves to a website with pay-per-click links redirecting to websites promoting the Complainant’s products as well as competing products.

5. Parties’ Contentions

A. Complainant

The Complainant claims that the Disputed Domain Name is confusingly similar to the Trademarks because the Disputed Domain Name wholly incorporates the Complainant’s Trademarks and because it consists of the name of a well-known luxury SUV manufactured and sold by the Complainant’s “Lincoln” division.

The Complainant alleges that the Respondent was not authorized by the Complainant to register the Disputed Domain Nameand has no relationship with the Complainant of any kind. Nor has the Complainant discovered any evidence that might indicate that the Respondent is commonly known as “Lincoln Navigator”. The Complainant learned of the Respondent’s registration in the spring of 2018. At that time, the Respondent used the Disputed Domain Nameto resolve to the webpage “landroverusa.com”advertising Range Rover SUVs which are luxury SUVs sold in direct competition with the Complainant’s Lincoln Navigator SUVs. The use that the Respondent has made of the Disputed Domain Namehas varied over time, but none is legitimate, and the Respondent has at all times used the Disputed Domain Namein a manner that infringes or dilutes the Complainant’s rights. The Respondent’s use of the Disputed Domain Nameto resolve to a website advertising luxury vehicles for sale in competition with the Complainant is clearly illegitimate.

The Complainant claims that the Disputed Domain Namewas registered and is being used in bad faith. Given the strength and fame of the Trademarks, the Respondent’s bad faith is established by the fact of registration alone. There can be no question that the Respondent intended to capitalize on the fact that the Disputed Domain Name clearly means and refers to “Lincoln Navigator” automobiles when the Respondent registered it.

The Respondent’s awareness of the Trademarks may also be inferred because the marks LINCOLN and NAVIGATOR were registered with the United States Patent and Trademark Office prior to the Respondent’s registration of the Disputed Domain Name and the Trademarks are well known and famous.

The uses that the Respondent has made of the Disputed Domain Name, moreover, clearly evidence bad faith use, as the Respondent is obviously taking advantage of the confusion that results when Internet users expecting to find information about Lincoln Navigator automobiles are directed to websites advertising competing and related goods offered for sale by others. The vast majority of the uses that the Respondent has made of the Disputed Domain Name are directly related to the Complainant’s Trademarks meaning as the name of a luxury SUV manufactured by a division of the Complainant. By using the Disputed Domain Name to resolve to the websites of competing auto manufacturers, including a number of webpages promoting luxury SUVs sold in direct competition with Lincoln Navigator SUVs, and to host websites displaying pay-per-click links related to the sale of Lincoln Navigator automobiles, the sale of other new and used cars, and car financing and warranties, Respondent is attempting to profit by directing the attention of Internet users interested in Lincoln Navigator automobiles to related or competing goods offered for sale by others.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that the complainant must prove each of the following three elements in order to succeed in a UDRP proceeding:

(i) the respondent’s 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 domain name; and

(iii) the respondent’s domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel is satisfied that the Complainant has rights to a trademark or service mark as reflected in the Trademarks.

A comparison between the Disputed Domain Name and the Trademarks shows that the Disputed Domain Name is confusingly similar to the Trademarks, because the Disputed Domain Name incorporates the Trademarks together (i.e., the LINCOLN Trademark and the NAVIGATOR Trademark). Even if the Disputed Domain Name is identical neither to the LINCOLN Trademark nor to the NAVIGATOR Trademark, the very circumstance that these two trademarks owned by the Complainant are integrated jointly in the Disputed Domain Name by nature leads to the conclusion that the Disputed Domain Name is confusingly similar to the Trademarks.

As a result, based on the rights of the Complainant in the Trademarks and on the confusing similarity between the Trademarks and the Disputed Domain Name, the Panel finds that the condition of paragraph 4(a)(i) of the Policy is met.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the Disputed Domain Name by demonstrating any of the following:

(i) before any notice to it 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 has been commonly known by the Disputed Domain Name, even if it 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.

Although the complainant bears the ultimate burden of providing all three elements of paragraph 4(a) of the Policy, previous UDRP panels have consistently ruled that the burden of production shifts to the respondent to come forward with evidence of its rights or legitimate interests in the disputed domain name, once the complainant has made a prima facie showing. See Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

In the Panel’s opinion, the Complainant has made a prima facie case against the Respondent. The Respondent which has not participated in these proceedings registered the Disputed Domain Name which integrates the Trademarks owned by the Complainant.

The Complainant has further established (without being contradicted) that the Respondent is not known by the Disputed Domain Name, has not been authorized by the Complainant to use the Trademarks in any way, has no connection or affiliation with the Complainant, and has never made any bona fide use of the Disputed Domain Name. The Complainant has also indicated that the Respondent registered the Disputed Domain Name over four years after it had obtained a United States trademark registration for the NAVIGATOR Trademark for use in connection with motor vehicles and their structural parts and over four years after the Complainant’s Lincoln division had begun selling Lincoln Navigator SUVs.

The Panel thus accepts the Complainant’s prima facie showing and finds that it was consequently up to the Respondent to come forward with evidence of its rights or legitimate interests in the Disputed Domain Name, which has not been done given the Respondent’s absence of participation to these proceedings.

The Panel shall assess the Respondent’s potential rights or legitimate interests in the present, i.e., with a view to the circumstances prevailing at the time of the filing of the complaint (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.11). The Panel notes in this respect that the Respondent used the Disputed Domain Name to resolve to the webpage “www.landroverusa.com”advertising Range Rover SUVs which are luxury SUVs sold in direct competition with Complainant’s Lincoln Navigator SUVs.

The Panel holds that this use does not create any rights or legitimate interests on the part of the Respondent in the Disputed Domain Name (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.11: The respondent’s use of a complainant’s mark to redirect users (e.g., to a competing site) would not support a claim to rights or legitimate interests).

The Panel notes, based on the information and documents on record provided by the Complainant, that the registration of the Disputed Domain Name was initially made in 2001 and that the Complainant learned of the Respondent’s registration of the Disputed Domain Name in the spring of 2018.

Even if the Respondent did not participate in the proceedings and thus did not make any statement about this, the Panel notes that other UDRP panels have declined to adopt concepts such as laches or its equivalent in UDRP cases, except in specific cases in which certain delays in filing a UDRP complaint would make it more difficult for a complainant to establish its case on the merits, particularly where the respondent can show detrimental reliance on the delay (WIPO Overview 3.0, section 4.17). In this case, the Panel considers that the long period of time that has elapsed since the registration of the Disputed Domain Name does not affect the position of the Complainant, particularly because the Respondent has not established any detrimental reliance on the delay.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of registration and use of a domain name in bad faith:

(i) circumstances indicating that the Respondent registered or acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to the Complainant (the owner of the trademark or service mark) or to a competitor of that Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the Disputed Domain name;

(ii) circumstances indicating that the Respondent registered the Disputed 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 the Respondent has engaged in a pattern of such conduct;

(iii) circumstances indicating that the Respondent registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the Respondent intentionally is using the Disputed Domain Name in an attempt to attract, for commercial gain, Internet users to its 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 its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

In this case, the Panel holds that the Respondent registered the Disputed Domain Name in bad faith because the Trademarks are distinctively identifying the Complainant and the Complainant’s activities so that the choice of the Disputed Domain Name cannot be reasonably explained otherwise than as a reference to the Trademarks of the Complainant.

The Respondent’s bad faith in the use of the Disputed Domain Name is evidenced by the fact that the Disputed Domain Name has been lastly used in order to resolve to the webpage “www.landroverusa.com” advertising Range Rover SUVs which are luxury SUVs sold in direct competition with Complainant’s Lincoln Navigator SUVs. The previous uses – even by assuming that they could be relevant here – similarly constitute a use of the Disputed Domain Name in bad faith.

For these reasons, the Panel considers that the Complainant has established that the Disputed Domain Name was registered and is being used in bad faith by the Respondent pursuant to paragraph 4(a)(iii) 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 <lincolnnavigator.com> be transferred to the Complainant.

Jacques de Werra
Sole Panelist
Date: September 30, 2018