Complainant is Ford Motor Company of Dearborn, Michigan, United States of America (“US”) represented by Phillips Ryther & Winchester, US.
Respondents are Daniel Strbik of Glendinning, New South Wales, Australia and Host Master of Chico, California, US (collectively, “Respondent”).
The disputed domain name <mrfpv.com> (the “Domain Name”) is registered with eNom (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 23, 2013. On August 26, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same day, the Registrar transmitted by email to the Center its verification response confirming Respondent as the registrant and provided 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 11, 2013. In accordance with paragraph 5(a) of the Rules, the due date for Response was October 1, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 2, 2013.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on October 14, 2013. 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 paragraph 7 of the Rules.
Complainant is Ford Motor Company, a publicly-traded corporation, organized under the laws of the State of Delaware, US. Complainant’s wholly-owned subsidiaries include Ford Motor Company of Australia Limited and Ford Motor Company of Canada Limited, which historically have held Complainant’s manufacturing rights in Commonwealth countries.
Complainant manufactures or distributes automobiles in 200 markets across six continents, with approximately 260,000 employees and 100 plants worldwide. Through Complainant’s system of dealers, Complainant has sold vehicles in Australia for almost 110 years and manufactured in the country since 1925.
Complainant is the registered owner in Australia of the trademark FORD (Australian Reg. No. 12063) and of the FORD oval logo (Australian Reg. No. 465653), including in class 12 for of motor vehicles and their parts, having obtained its first registration for FORD in 1925. Complainant has continued to market, sell, and service Ford motor vehicles and parts throughout Australia since that time under brands including FORD and FPV. The trademark FORD falls within a class of famous trademarks and was listed in Business Week’s annual survey of the “100 Most Valuable Global Brands” as the 45th most valuable brand in the world in 2012.
The term “FPV” is an acronym for “Ford Performance Vehicles” and has been used by Complainant in Australia since 2001 in connection with high performance, special edition Ford vehicles. Complainant operates a website devoted to these premium vehicles linked to the domain name <fpv.com.au>. Complainant is the registered owner in Australia of the trademark, FPV (Australian Registration No. 892112), in classes 6, 12, and 35 registered on October 15, 2001. The FPV logo design mark shown below:
The Domain Name, <mrfpv.com>, was registered on March 30, 2009.
Complainant states that it has spent many millions of dollars and has expended significant effort in advertising, promoting and developing the FORD trademarks throughout the world, including in Australia. As a result of such advertising and expenditures, Complainant has established immense goodwill in the marks.
Complainant asserts that Respondent has used the Domain Name to sell new and used Ford FPV parts. Specifically, Respondent used the Domain Name to redirect customers to his eBay store, operated by Respondent under the name “Mr. FPV.” In connection with his store name, Respondent prominently displayed Complainant’s FPV logo. Respondent was not identified by name on the online store to which the Domain Name resolved nor was Respondent’s relationship (or lack thereof) with Complainant anywhere explained or provided on the online store to which the Domain Name currently resolves. Complainant provided a screenshot of Respondent’s eBay store saved on March 28, 2013, as it appeared before Respondent received a demand letter from Complainant’s legal counsel.
Complainant alleges that the products advertised on Respondent’s website included aftermarket parts as well as counterfeit and infringing parts, including counterfeit FPV and F6 (Australian Trademark Reg. No. 1011193) grilles and emblems. Complainant has provided screenshots from Respondent’s eBay store showing some of these alleged counterfeit goods, together with photographs of those goods purchased at the direction of Mr. Kosofsky, a global brand protection investigator for Complainant. Complainant states that in the course of investigating use of the Domain Name, it learned that Respondent is Daniel Strbik. Following Complainant’s discovery and preliminary investigation of Respondent’s registration and use of the Domain Name, on June 12, 2013 Complainant’s counsel sent a demand letter to Respondent notifying him of Complainant’s legal objections to his registration and use of the Domain Name. On July 22, 2013, Respondent’s counsel responded by letter, denying that Mr. Strbik had any intent to violate Complainant’s rights, representing that he would stop selling counterfeit goods; include verbiage in the product listings of aftermarket grilles that are not manufactured by Complainant stating that such grilles are not identical to genuine grilles and are not affiliated with Complainant; and remove Complainant’s design trademarks and web links to the Domain Name from his eBay store. However Respondent maintained that his continued use of the Domain Name and corresponding company name would not harm Complainant, citing other eBay sellers using variations of FPV in their user names that may not have been authorized by Complainant.
Complainant contends that the Domain Name incorporates its famous FPV trademark, adding only the generic word “mr.” The addition of such a generic word or prefix to a trademark in a domain name does nothing to diminish the confusing similarity between the domain name and the trademark. Complainant points to a recent UDRP decision in which the panel ordering transfer of the domain name <missswarovksi.com> and found that adding the generic word “miss” did not change that the disputed domain name was confusingly similar to the complainant’s trademark. See Swarovski Aktiengesellschaft v. Private Registration/ Miss Swarovski, Kamenoff, WIPO Case No. D2012-1603.
Complainant contends that Respondent should be considered as having no rights or legitimate interest in the Domain Name because Respondent is not known by the Domain Name, has not been authorized by Complainant to use the FORD trademarks, and has never made a bona fide use of the Domain Name. The only use that Respondent has made is to host a website on which Respondent has identified himself by the infringing business name, “Mr. FPV”, while displaying Complainant’s FPV logo design trademark and selling parts and accessories in competition with Complainant and its authorized dealers, including allegedly counterfeit and infringing parts and accessories. Complainant asserts that because it did not authorize Respondent to register the Domain Name, which consists in primary part of Complainant’s FPV trademark, and use the Domain Name to compete with Complainant, this use establishes that Respondent has no legitimate interest in the Domain Name. Such an infringing use of Complainant’s trademark cannot give rise to a legitimate right or interest on the part of Respondent.
Complainant states that Respondent’s use of the Domain Name in this manner also prevents Respondent from claiming that Respondent is known by the Domain Name. As Complainant has long used its FPV mark in connection with autos and auto parts and accessories, any such use by Respondent directly violates Complainant’s trademark rights. Thus, Respondent could not legally acquire any public association between Respondent and a domain name referring to Complainant, and hence could never be commonly known or recognized by that name.
Further, Complainant contends that the legitimacy of a registrant’s use of a domain name should be determined by the use made before the registrant received notice of a dispute. Thus, uses made of the Domain Name by Respondent following his receipt of the demand letter should not be considered relevant. However, even if, contrary to the evidence, Respondent had removed all aftermarket and counterfeit parts from his website and was using the Domain Name only to sell genuine Ford parts and accessories, Respondent would still not have rights in the Domain Name. Under the consensus panel view, a reseller’s use of a domain name to advertise genuine goods may in certain circumstances constitute a bona fide offering of goods and services, but only when, among other essential requirements, the website accurately and prominently discloses the registrant’s relationship with the trademark holder. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph2.3. Nor may such websites seek to take unfair advantage of the value of the trademark. These requirements cannot be met when the registrant conducts business under a name consumers will presume is affiliated with the trademark owner, displays the complainant’s design trademarks, and nowhere discloses its own identity. Thus, Respondent cannot claim or establish any legitimate interest in the Domain Name.
Complainant contends that many factors demonstrate Respondent’s bad faith. Given the strength and fame of the FORD trademarks, Respondent’s bad faith is established by the fact of the Domain Name’s registration alone. Complainant’s rights in FORD and FPV were well established in Australia long before Respondent registered the Domain Name, and Respondent cannot claim that he registered it unaware of its trademark significance.
Complainant emphasizes that, as used by both Complainant and Respondent, FPV is an acronym for “Ford Performance Vehicles.” Acronyms are viewed by the public as equivalents to the full mark. The law is well settled that initials, in the trademark context, do not differ significantly from the words they represent. Further, the FORD mark falls within a select class of internationally strong marks that have become so famous that it is impossible for any respondent to claim that he was unaware of Complainant’s prior rights or has a legitimate interest in domain names that incorporate the mark.
Complainant states that Respondent’s use of the Domain Name to operate an infringing website constitutes further evidence of bad faith. Use of a domain name that is confusingly similar to a complainant’s trademark to host a website offering competing goods and services for sale is classic cyberpiracy and constitutes evidence of bad faith in the registration and use of the disputed domain name pursuant to paragraph 4(b)(iv) of the Policy.
Complainant urges that any of these circumstances, whether alone or in combination, is sufficient to justify a finding that Respondent has acted in bad faith.
Respondent did not reply to Complainant’s contentions.
The required elements of the Policy are well understood. In order to succeed in its claim, Complainant must demonstrate that the three elements enumerated in paragraph 4(a) have been satisfied. These elements are that:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith
Complainant has demonstrated rights in its FORD family of trademarks, including its FPV mark, as evidenced by the trademark registrations submitted with the Complaint, the evidence that FORD is an internationally well-known mark, and evidence of Complainant’s long-standing use of these marks in commerce in Australia, where Respondent Daniel Strbik is located.
The threshold test for confusing similarity under the Policy involves a comparison between the trademark and the domain name to determine the likelihood of user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of the common or descriptive term typically being regarded as insufficient to prevent the likelihood confusion. See WIPO Overview 2.0”, paragraph 1.2. Moreover, the addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. UDRP panels have usually found the incorporated trademark to constitute the dominant component of the domain name. See WIPO Overview 2.0, paragraph 1.9.
In this case, the Panel finds that the Domain Name <mrfpv.com> is confusingly similar to the Complainant’s FPV mark. Without the gTLD suffix, the Domain Name consists of the combination of the distinctive FPV portion of Complainant’s trademark, with the added letters “mr,” which in this context can be taken to refer to the salutation “Mr.” Indeed, confusing similarity is amplified because Respondent used the Domain Name in connection with his online business, named “Mr. FPV.” See e.g., ACCOR, Société Anonyme à Directoire et Conseil de surveillance v. Tigertail Partners, WIPO Case No. D2002-0625 (“[c]onfusion is only heightened when the generic word added by Respondent is descriptive of the Complainant’s goods or services marketed in relation to the trademark”); see also Transamerica Corporation v. DreamNet Inc., NAF Claim No. 103036 (transferring <misstransamerica.com> and holding, “Due to the substantial secondary meaning Complainant has created with its mark, as well as its presence on the Internet, users accessing the Internet are likely to recognize Respondent’s domain name and falsely assume that the disputed domain name has the support and sponsorship of Complainant when it does not.”)
The Panel determines that the Domain Name is confusingly similar to a trademark in which Complainant has rights. Accordingly, the Panel concludes that the first element of paragraph 4(a) of the Policy is established.
A complainant is normally required to make out a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name. Once such prima facie case is made, the respondent faces the burden of demonstrating rights or legitimate interests. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.
In this case, the Panel finds that Complainant has made a prima facie showing that Respondent has no rights or legitimate interests in the Domain Name. Respondent is not authorized to use Complainant’s FPV trademark in the Domain Name, is not associated or affiliated with Complainant, and is not making a legitimate noncommercial or fair use of the Domain Name. Moreover, Complainant has demonstrated prior longstanding rights in its FORD and FPV family of trademarks. When the Domain Name was registered by Respondent in March 2009, Complainant’s marks were well established. Respondent was clearly aware of Complainant’s trademarks, particularly as he identified himself as “Mr. FPV” on his website.
Complainant has shown that Respondent has not made bona fide use of the Domain Name and is not commonly known by the Domain Name. Respondent’s website has displayed Complainant’s FPV logo design trademark and sold parts and accessories in competition with Complainant and its authorized dealers, including allegedly counterfeit and infringing parts and accessories. In these circumstances, such use of the domain name cannot give rise to a right or legitimate interest on the part of Respondent. See Hertz System Inc. v. Home, Khuong Mai Ngoc, WIPO Case No. D2012-1946 (transferring <hertzcouponcode.net> and finding use of domain name to operate website on which respondent identified itself as “Hertz Coupon Codes” and purported to distribute Hertz discount codes “precludes the Respondent claiming any legitimate interest in the domain name”); Audi AG, Volkswagen Group of America, Inc. v. Sandlot LLC, Jim Gossett, WIPO Case No. D2008-1053 (the panel concluded that the complainant met the burden of proving that the respondent did not have rights or legitimate interests in the disputed domain names: “[a]s contended by Complainants, the Panel finds that the respondent used the disputed domain names to host commercial websites in order to advertise automobiles and related goods and services for sale in direct competition with Audi and its dealers. Such infringing use of the AUDI mark does not give rise to a legitimate right or interest.”).
Even if Respondent was selling genuine Ford parts and accessories, Respondent would not have a legitimate interest in the Domain name, as the website does not accurately disclose the registrant’s relationship with Complainant.
Respondent’s counsel, in a letter of July 22, 2013 to Complainant’s counsel (before the commencement of the present proceeding), indicated that Respondent’s actions were “innocent and unwitting” and that Respondent had no knowledge of intellectual property rights. Assuming this is true, Respondent nonetheless, through its registration and use of the Domain Name, failed to use the Domain Name in connection with a bona fide offering of goods and services and infringed Complainant’s rights in its FORD and FPV trademarks.
With all of these points taken together, the Panel finds that Complainant has made a prima facie showing that Respondent has no rights or legitimate interests in the Domain Name. In response to Complainant’s prima facie case, Respondent has not submitted a Response.
Accordingly, the Panel concludes that the second element of paragraph 4(a) of the Policy is established.
The Panel concludes that Complainant has established bad faith registration and use of the Domain Name by Respondent under paragraph 4(b) of the Policy, based on the reasons discussed above. See Ford Motor Co. v. Domain Administrator, WIPO Case No. D2008-1856 (transferring fordmotorcraft.com and finding bad faith based on “the Complainant’s submissions that the Respondent registered the disputed domain name with the Complainant and its trademarks in mind and, thereafter, used it to target Internet traffic from visitors who were seeking the Complainant’s own website at ‘www.motorcraft.com’.”); see also Ford Motor Company v. Knuhtsen, WIPO Case No. DBIZ2002-00183 (July 15, 2002) (transferring landrover.biz and finding “Respondent registered the disputed domain name in bad faith because the Complainant’s trademark is in a select class of internationally strong marks that make it virtually certain Respondent knew that his domain name registration infringed Complainant’s mark”).
For all of these reasons, the Panel finds bad faith registration and use.
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, <mrfpv.com>, be transferred to Complainant.
Christopher S. Gibson
Sole Panelist
Date: November 12, 2013