The Complainant is Ford Motor Company, United States of America (“USA”), represented by Phillips Ryther & Winchester, USA.
The Respondent is Namescope Limited, Saint Kitts and Nevis.
The disputed domain name <koolford.com> is registered with Tucows Inc., and the disputed domain name <fordescapes.com> is registered with eNom, Inc. (the “Registrars”).
The Complaint in respect of the disputed domain name <koolford.com> was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 7, 2020. On January 8, 2020, the Center transmitted by email to the Registrar, Tucows Inc. a request for registrar verification in connection with the disputed domain name. On January 8, 2020, 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 January 14, 2020 providing the registrant and contact information disclosed by the Registrar, Tucows Inc., and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on January 16, 2020. The Center noted that a second disputed domain name <fordescapes.com> had been added to the amendment to the Complaint. On January 16, 2020, the Center acknowledged receipt of the amendment to the Complaint and the Center transmitted to the Registrar, eNom, Inc., a request for registrar verification for the second disputed domain name. On January 16, 2020, Tucows, Inc., to which the Registrar, eNom, Inc., is affiliated, transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details and confirming registrar lock on the second disputed domain name.
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 January 24, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 13, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 28, 2020.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on March 10, 2020. 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.
The Complainant has manufactured cars and other vehicles since 1903, well over a century ago. It is well known internationally and has about 166,000 employees and 100 factories worldwide. The Complainant’s brand has been ranked consistently among the 50 most valuable brands in the world.
“John Kool Lincoln Mercury”, a dealership in Ford, Lincoln and Mercury vehicles, opened in 1984, in Portsmouth, Virginia, where it was commonly known as “Kool Ford” until it closed in 2010, and also in Keller, Virginia, in 2006, where its business name was “Kool Ford”. The disputed domain name <koolford.com> was registered on July 12, 2006, and shortly afterwards the dealership registered the domain name <1koolford.com>, which domain name is now owned by “Ford Direct”, a subsidiary of the Complainant.
Ford Escape is the name of one of the Complainant’s car models, the name of which, has been used by the Complainant since July 1, 2000.
The Complainant holds numerous trademarks internationally for FORD and ESCAPE of which the following are representative for the purposes of the present proceeding:
FORD, registered at the United States Patent and Trademark Office (USPTO), registered July 20, 1909, registration number 74530, for automobiles and their parts in class 12;
FORD, registered at the USPTO, registered March 26, 1957, registration number 643185, for passenger cars and trucks in class 12;
ESCAPE, registered at the USPTO, registered May 15, 2001, registration number 2451325, in class 12.
The business of the Respondent is not clear. The disputed domain name <koolford.com> was registered on July 12, 2006. It has been used to redirect visitors to a variety of other websites including those advertising other makes of vehicles, or purporting to reveal intelligence or quotations on car prices available through certain dealers.
The disputed domain name <fordescapes.com> was registered on January 14, 2007. The WhoIs record as of January 14, 2020, shows the ownership to be mostly redacted for privacy, but a WhoIs record saved by DomainTools on April 7, 2018, shows the Respondent as registrant, which the Registrar confirmed to be correct as of January 16, 2020. According to the Registrar, the registration expired on January 14, 2020, but the Complainant had the option to renew it to prevent deletion. This disputed domain name has been used to redirect visitors to a website of a competitor of the Complainant and has been offered for sale on “www.sedo.com” for a minimum bid of USD 500.
The Complainant contends that it has rights in the registered trademarks FORD and ESCAPE and says the disputed domain names are confusingly similar to respective trademarks.
The disputed domain name <koolford.com> wholly incorporates the Complainant’s trademark FORD and is identical to the name of the authorised FORD dealership “Kool Ford”. Placement of a manufacturer’s trademark alongside a dealer’s name or location is a common practice, particularly in the automotive industry.
The disputed domain name <fordescapes.com> wholly incorporates two of the Complainant’s registered trademarks and is the name of one of the Complainant’s popular vehicle models. The terminal letter “s” is immaterial to the determination of confusing similarity
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent has no connection or affiliation with the Complainant, has not been authorised to use its trademarks, and is not known by the disputed domain names. Only John Kool and his successors have any right to use the business name “Kool Ford”.
The Complainant says the Respondent has never used or made demonstrable preparations to use the disputed domain names for a bona fide purpose. The uses to which they have been put have not been legitimate and have included the redirection of visitors to advertisers of competing vehicles and other products or services.
The Complainant further contends that the disputed domain names were registered and are being used in bad faith.
The Complainant says its trademark FORD is so strong and well know that it is not possible for the Respondent to have been unaware of it. The Complainant’s trademarks FORD and ESCAPE were registered some years before the disputed domain names were registered. The incorporation of the Complainant’s trademark FORD into the disputed domain names makes it possible for Internet users who are seeking the Complainant to find the Respondent’s websites instead.
The Complainant says the combination of KOOL and the trademark FORD in the respective disputed domain name can only have been intended as a reference to the FORD dealership, particularly as it was registered about the time when the “Kool Ford” dealership was to be opened. Thus, the Respondent targeted the Complainant.
The Complainant says bad faith is further substantiated by the Respondent’s use of the disputed domain names to resolve to the websites of the Complainant’s direct and indirect competitors. There is still bad faith if the websites shown to visitors have no relation to the Complainant’s products, if there is no legitimate reason for the Complainant’s trademarks to have been incorporated into the disputed domain name.
The Complainant has produced a screen capture from the Whoxy website (“www.whoxy.com”) listing domain names registered under the Respondent’s email address and says that, in the terms of paragraph 4(b)(ii) of the Policy, it is evidence the Respondent has registered numerous domain names related to famous trademarks or misspellings of them. The Complainant lists four cases under the Policy involving well-known trademarks that were decided against the Respondent.
On June 12, 2019, in respect of the disputed domain name <koolford.com>, the Complainant sent a cease, desist and transfer email to the Respondent, via the Registrar in the absence of a proper contact address, with a follow up email on August 21, 2019. There were no replies.
The Complainant has cited or quoted from a number of previous decisions under the Policy that it considers to support its position, including cases involving the Complainant.
The Complainant requests the transfer of the disputed domain names.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute-resolution provider, in compliance with the Rules, that:
“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith”.
The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
The Panel is satisfied that the Complainant has rights in the trademarks FORD and ESCAPE, for which it has produced satisfactory evidence of registration.
The disputed domain name <koolford.com> incorporates the Complainant’s trademark FORD in full and is found to fulfil the requirements for confusing similarity under paragraph 4(a)(i) of the Policy. The prefix term “kool” is found to affirm confusing similarity because, on the evidence, the entire disputed domain name is then the same as a dealership authorised to use the Complainant’s trademark. The generic Top-Level Domain (gTLD) “.com” may be disregarded in the determination of confusing similarity.
The disputed domain name <fordescapes.com> incorporates the Complainant’s registered trademark FORD and additionally the Complainant’s registered trademark ESCAPE, and is found to be confusingly similar and virtually identical to the two trademarks. The suffixed letter “s” is found not to be distinguishing or to detract from confusing similarity.
Accordingly the Panel finds for the Complainant under paragraph 4(a)(i) of the Policy.
The Complainant has stated a prima facie case to the effect that it has no connection or affiliation with the Respondent, which has not been authorised to use its trademarks and has no rights or legitimate interests in respect of the disputed domain names. The Complainant’s representative trademarks for FORD, registered on July 20, 1909, and March 26, 1957, and for ESCAPE, registered on May 15, 2001, predate the registration dates of the disputed domain names <koolford.com> on July 12, 2006 and <fordescapes.com> on January 14, 2007.
Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation:
“(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”.
The Respondent has made no reply. On the evidence, the disputed domain names resolve to websites extolling the virtues of motor vehicles produced by the Complainant’s industry competitors, or to websites of an automotive nature. There is no evidence the disputed domain names have been used or are in preparation for use for any bona fide offering of goods or services such as would satisfy the requirements of paragraph 4(c)(i) of the Policy. The Respondent is not commonly known by either of the disputed domain names, and there is no evidence of their use for a fair or legitimate noncommercial purpose. On the evidence, only John Kool and his successors have any right to use the business name “Kool Ford”. The Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain names and finds for the Complainant under paragraph 4(a)(ii) of the Policy.
The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain names have been registered and are being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location”.
The provisions of paragraph 4(b) of the Policy are without limitation and bad faith may be found alternatively by the Panel.
Screen captures of the disputed domain name <koolford.com> produced by the Complainant, directly or through the Wayback Machine (“www.archive.org”), show it to have been used to redirect visitors to websites advertising the Complainant’s competitors such as Volvo and Nissan, or to websites purporting to give advice about vehicle prices.
Screen captures of the disputed domain name <fordescapes.com> show it resolving to websites advertising vehicles branded Nissan, a competitor of the Complainant.
It may reasonably be concluded that the referral of visitors to various automotive products by means of advertisements or links is intended to be commercially remunerative for the Respondent. These activities accord with the common model of a domain name being devised for the purpose of collecting a share of advertising revenue, through the referral of visitors to advertisements or other websites. This is not a legitimate means of generating revenue if the initial means of attracting visitors is the appropriation of another’s trademark without permission in order to create the relevant domain name.
On the evidence, and on the balance of probabilities, the disputed domain names are found to have been used with intent to attract visitors for commercial gain by confusion with the Complainant’s trademarks, constituting use in bad faith within the terms of paragraph 4(b)(iv) of the Policy. The Panel further finds, on the balance of probabilities, that their use for commercially remunerative advertising was at least a part of the Respondent’s intentions at the times of registration of the disputed domain names and therefore that they were registered in bad faith.
The disputed domain name <fordescapes.com> has been offered for sale by Sedo (“www.sedo.com”) in the terms: “This premium domain is for sale in partnership with Sedo”, requiring a minimum offer of USD 500. The cost of registration of the disputed domain name <fordescapes.com> may reasonably be presumed to have been less than the USD 500 minimum bid invited. Taking into account the long history of the Complainant’s well-known trademark FORD, its prominent incorporation into the disputed domain name, and the compounding incorporation of the Complainant’s trademark ESCAPE, the Respondent is found on the balance of probabilities to have registered the disputed domain name <fordescapes.com> with the intention of ultimate profitable sale, as contemplated by paragraph 4(b)(i) of the Policy (in which the use of the word “primarily” need not exclude other intentions), further constituting registration and use in bad faith.
The Complainant has produced a screen capture dated January 14, 2020, from Whoxy (“www.whoxy.com”) listing 70 domain names registered by the Respondent through a variety of registrars, but mainly through GoDaddy.com, LLC or Tucows Domains Inc. The Complainant has instanced a number of these domain names as incorporating variations or misspellings of well-known trademarks: <nissannusa.com>, <undermour.com>, <thermator.com>, <t-mpbile.com>, <comcastl.net>, <cookvillehonda.com>, <hondarenton.com>, and <audiuas.com>. The Complainant has also listed four previous cases under the Policy, involving variations on trademarks, decided between August 19, 2014 and November 9, 2017, in three of which the Respondent was accompanied by multiple respondents and in one stood alone, that resulted in the transfer of over 40 domain names to respective complainants.
The Complainant has cited paragraph 4(b)(ii) of the Policy as applicable to these multiple adverse decisions, i.e., that they amount to a pattern of blocking registrations, however the Panel finds it less probable that a trademark owner would want to reflect their trademark with a misspelling, and more probable that the Respondent has engaged in a pattern of the registration of domain names embodying corrupted trademarks for purposes of intentional confusion, within the ambit of paragraph 4(b)(iv) of the Policy. Nevertheless, the provisions of paragraph 4(b) of the Policy are without limitation and the evidence of the Respondent’s domain name registration history depicted in the Whoxy screen capture and record in proceedings under the Policy is found to support a finding that the presently disputed domain names accord with a pattern and have been registered and used in bad faith.
On the totality of the evidence the Panel finds the registration and use of the disputed domain names to have been in bad faith in the terms of paragraph 4(a)(iii) 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 names <koolford.com> and <fordescapes.com> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Sole Panelist
Date: March 17, 2020