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 Above.com Domain Privacy of Beaumaris, Victoria, Australia / Host Master, Transure Enterprise Ltd of Wilmington, Delaware, United States.
The disputed domain name <morrisford.com> (the "Disputed Domain Name") is registered with Above.com Pty Ltd. (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 26, 2018. On February 27, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 28, 2018, 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 28, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on March 5, 2018.
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 the Respondent of the Complaint, and the proceedings commenced on March 9, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 29, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 3, 2018.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on April 6, 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.
Complainant states that it was founded in 1903 and is "a global automotive industry leader" that "manufactures or distributes automobiles in 200 markets across six continents, including in Australia, with approximately 260,000 employees and 100 plants worldwide." Complainant further states, and provides evidence to support, that "[i]n 2011, the year in which morrisford.com was registered, [Complainant] was listed in Interbrand's annual survey of the '100 Most Valuable Global Brands' as the 50th most valuable brand in the world" and that "[i]n the most recent survey, [Complainant] was ranked as the 33rd most valuable global brand."
Complainant states, and provides evidence to support, that it owns registrations for the trademark FORD (the "FORD Trademark") "in the U.S. and worldwide," including the following:
- U.S. Reg. No. 74,530 for FORD for use in connection with "automobiles and their parts" (registered July 20, 1909)
- U.S. Reg. No. 643,185 for FORD for use in connection with "passenger cars and trucks" (registered March 26, 1957)
The Disputed Domain Name was created on December 31, 2011, and, as described by Complainant and not contradicted by Respondent, redirects to various websites at different times, including "www.edmunds.com" (an automotive website), "www.morris4x4center" ("a leading e-commerce destination for Jeep and 4x4 enthusiasts looking to outfit and enhance their driving experience"), "www.nissanusa.com" (which advertises Nissan autos for sale), and "www.autoblog.com" (which "advertis[es] autos for sale manufactured by Jeep, Chevrolet, and a number of other manufacturers, including some autos manufactured by Ford").
Complainant further states that "Morris Ford" is "the name of an authorized Ford dealership located in Saratoga, New York, founded by Charles Morris, which uses the domain name <morrisfordinc.com>, which it registered on February 20, 2015" and that, sometime in 2017, "a representative of Morris Ford, Inc. contacted Respondent and was informed by Respondent that Morris Ford, Inc. would have to pay USD 6,000 for the domain name."
Complainant states and provides evidence in support thereof (which Respondent has not contradicted) that it contacted Respondent about the Disputed Domain Name via letter on July 31, 2017, but Respondent did not respond.
Complainant contends, in relevant part, as follows:
- The Disputed Domain Name is confusingly similar to the FORD Trademark because "[t]he Disputed Domain Name wholly incorporates [Complainant's] registered FORD mark, and is identical to Morris Ford, the business name Ford authorized its dealer to use."
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, "Respondent is not known by the Disputed Domain Name, has not been authorized by Ford to use the Ford Marks in any way, has no connection or affiliation with Ford, and has never made any bona fide use of the Disputed Domain Name"; using the Disputed Domain Name to redirect users to a website that offers products and services similar to those offered by Complainant is not bona fide or legitimate but instead is "a competing and infringing use."
- The Disputed Domain Name was registered and is being used in bad faith because, inter alia, Respondent has redirected the Disputed Domain Name to a website that offers for sale products that compete with Complainant's products under the FORD Trademark; and Respondent's offer to sell the Disputed Domain Name for USD 6,000 is "in gross excess of the respondent's out-of-pocket registration costs [and] constitutes bad faith registration and cybersquatting, regardless of how, or by whom, discussions regarding transfer were initiated."
Respondent did not reply to Complainant's contentions.
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is 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 Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith. Policy, paragraph 4(a).
Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the FORD Trademark.
As to whether the Disputed Domain Name is identical or confusingly similar to the FORD Trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., "morrisford") because "[t]he applicable Top Level Domain ('TLD') in a domain name (e.g., '.com', '.club', '.nyc') is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test." WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.11.1.
It is obvious that the Disputed Domain Name contains the FORD Trademark in its entirety and simply adds the word "morris". As stated in WIPO Overview 3.0, section 1.7, "in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing." Further, "when a domain name is registered which is a well-known trademark in combination with another word, the nature of the other word will largely determine the confusing similarity." Yellow Corporation v. MIC, WIPO Case No. D2003-0748. Here, given that "Morris Ford" is the name of an authorized Ford dealership, the Panel finds that inclusion of the word "morris" in the Disputed Domain Name only heightens confusing similarity.
Accordingly, the Panel finds that Complainant has proven the first element of the Policy.
Complainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, "Respondent is not known by the Disputed Domain Name, has not been authorized by Ford to use the Ford Marks in any way, has no connection or affiliation with Ford, and has never made any bona fide use of the Disputed Domain Name"; using the Disputed Domain Name to redirect users to a website that offers products and services similar to those offered by Complainant is not bona fide or legitimate but instead is "a competing and infringing use."
WIPO Overview 3.0, section 2.1, states: "While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of 'proving a negative', requiring information that is often primarily within the knowledge or control of the respondent. As such, 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."
The Panel finds that Complainant has established its prima facie case and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has satisfied the second element of the Policy.
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant's documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the 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 registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant'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 registrant's website or location or of a product or service on the registrant's website or location. Policy, paragraph 4(b).
Here, Complainant does not specifically argue which, if any, of the factors listed above provides evidence of bad faith in this case. However, the Panel agrees with the decision cited by Complainant, Bayerische Motoren Werke AG v. Aditya Roshni, Web Services Pty, WIPO Case No. D2015-1110, that using a domain name containing an automotive company's trademark plus another name will "intentionally attract Internet users for commercial gain, by creating a likelihood of confusion with Complainant's [automotive] trademark, since it is clearly possible for Internet users to end up at Respondent's websites while searching for Complainant's products and services."
Accordingly, the Panel finds that Complainant has proven the third element of the Policy.
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 <morrisford.com> be transferred to Complainant.
Douglas M. Isenberg
Sole Panelist
Date: April 20, 2018