WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Ford Motor Company v. Privacy by Design, LLC / Shirley Randall, Tranfer Broker, Registration Private, Domains By Proxy, LLC / Ipathy Venkata Rao, Usama Norat

Case No. D2022-0306

1. The Parties

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

The Respondent is Privacy by Design, LLC, United States / Shirley Randall, United States, Tranfer Broker, United States, Registration Private, Domains By Proxy, LLC, United States / Ipathy Venkata Rao, India, Usama Norat, India.

2. The Domain Names and Registrars

The disputed domain names <myfordbenefits.bid>, <myfordbenefits.biz>, and <myfordbenefits.org> (“Domain Names”) are registered with Porkbun LLC (a “Registrar”).

The disputed domain names <fiestamovement.com> and <usfordbenefits.com> (“Domain Names”) are registered with GoDaddy.com, LLC (a “Registrar”).

The disputed domain name <usfordbenefits.com> (a “Domain Name”) is registered with Dynadot, LLC (a “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 28, 2022. On January 31, 2022, the Center transmitted by email to each Registrar a request for registrar verification in connection with the Domain Names. On January 31, 2022, and February 1, 2022, the Registrars transmitted by email to the Center their verification responses disclosing multiple underlying registrants and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 4, 2022, providing the registrants and contact information disclosed by the Registrars and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed amendments to the Complaint on February 7, 10, and 11, 2022, with a request for consolidation. On February 14, 2022, the Center sent an email to the Parties regarding prima facie consolidation.

The Center verified that the Complaint together with the amendments 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 Respondents of the Complaint, and the proceedings commenced on February 14, 2022. In accordance with the Rules, paragraph 5, the due date for Response was March 6, 2022. The Respondents did not submit a formal response but sent several emails to the Center on February 4, 8, and 14, 2022. On March 7, 2022 following the response due date, the Center informed the Parties that it will proceed to panel appointment.

The Center appointed W. Scott Blackmer as the sole panelist in this matter on March 16, 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

The Complainant is a publicly-traded corporation, organized under the laws of Delaware, United States, with its principal place of business in Dearborn, Michigan. Founded in 1903, the Complainant manufactures or distributes automobiles in approximately 200 markets across six continents, with over 180,000 employees and over 100 plants worldwide. The Complainant or its predecessor have continuously used FORD as a trademark in connection with automobiles and automobile parts and accessories since 1895 in the United States and other countries and is now known worldwide. 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.”)

FIESTA is the name of a subcompact automobile sold by the Complainant from 1976 through the current model year in Europe and through model year 2019 in the United States. The Complainant continues to sell certified, pre-owned FIESTA automobiles in the United States and provides parts and services for FIESTA autos in the United States. The Complainant has sold over 16 million FIESTA autos worldwide, making the vehicle one of its best-selling marques. FIESTA autos have been the best-selling new car in the United Kingdom in every year since 2009. FIESTA autos have been manufactured and sold in the United Kingdom, India, Germany, Spain, Brazil, Argentina, Venezuela, Mexico, Taiwan Province of China, China, Thailand, and South Africa.

The Complainant or its affiliates hold numerous FORD and FIESTA trademarks including the following:

The Complainant operates numerous websites and social media sites incorporating the FORD trademark, including websites at “www.ford.com” and “www.myfordbenefits.com”. The Complainant has operated the latter website since September 2009 as a portal for the Complainant’s employees to obtain information and assistance about their employee benefits and manage their insurance, pension, and other benefits. The Complainant also has websites and social media pages devoted to owners and prospective owners of FIESTA automobiles, such as “www.ford.com/cars/fiesta” and “www.ford.co.uk/cars/new-fiesta”.

The Domain Names were registered with three different Registrars, using domain privacy services. After receiving Requests for Registrar Verification, the Registrars furnished information about the underlying registrants, as follows:

The underlying registrants as shown above are referred to hereafter as the Respondents.

The Panel notes that the first Domain Name, <fiestamovement.com>, is the outlier in terms of registration dates, but there is good reason to believe that the Respondent acquired the Domain Name more recently. The Registrar reports that the Domain Name was created on December 9, 2008, but the registration was “updated” on July 27, 2018. In fact, the evidence of screenshots archived by the Internet Archive’s Wayback Machine indicates that the Complainant itself may have first created and used the Domain Name. Screenshots from 2009 show that the Domain Name was used to advertise the FORD FIESTA automobile, on a website headed “Join the Fiesta Movement” and copyrighted by the Complainant. Similar pages are found through 2015. After that, screenshots show that the Domain Name was parked with the Registrar and listed for sale. In 2017 the Domain Name resolved to a “Fiesta Movement” website with some of the same articles about the “Fiesta Movement” that now appear on the Respondent’s website, along with blog posts and links to third-party websites about various technology products and applications, with prices stated in Indian rupees. These are similar to posts and links that now appear on the Respondent’s website. In 2020 this website added the employer and dealer portal pages described below.

The Complaint attaches screenshots of the websites to which the respective Domain Names resolved in May and October 2021. These may be described as follows:

<fiestamovement.com>: The Domain Name <fiestamovement.com> resolved to a website with diverse “categories” of blogs, resources, and links. The website did not name the website operator. Three of the featured articles on the home page concerned the “Fiesta Movement”, discussing the history and marketing of the Complainant’s FIESTA automobile. Other articles and blog posts concerned Windows 10 and other technology topics. Still others featured various retailers’ surveys and promotions. Most of these surveys offered cash rewards or other incentives and were aimed at consumers in the United States. Other links on the home page were for employee portals at major United States employers (including JCPenney, CVS, and the United States Postal Service). These included prominently instructions for resetting the user’s login credentials. The website included pages with similar instructions for using portals designed for dealers and vendors of General Motors, Wells Fargo, consumers and dealers with Ford Credit accounts, and people paying fines online for motor vehicle offenses assessed through the New Jersey State court system.

The home page of the Respondent’s website at <fiestamovement.com> tabbed a page labelled “MYFORD BENEFITS”. This page was headed “MyFordBenefits Login – www.myfordbenefits.com for Retirees” and displayed the Complainant’s trademarked blue oval logo. It explained in detail how to use the Complainant’s employee benefits website at “www.myfordbenefits.com”, to which it linked. The page allowed users to submit their names and email addresses for communications and also to post comments. Several queries from site visitors were published on the site, asking specific questions about individual insurance and pension coverage, such as this one (the name is redacted here):

“When I retired March 1st 2020 I signed up for Humana insurance through UAW the trust do I still have medical benefits now[?]”

Clearly, at least some site visitors believed that the site was affiliated with the Complainant. At least until October 2021, the website did not disclose the relationship, if there is any, between the website operator and the Complainant.

At the time of this Decision, the Domain Name <fiestamovement.com> resolves to a substantially similar website which also does not disclose the name of its operator. This website no longer includes a “MyFordBenefits” page, but it features more employee and dealer portals for a variety of companies. A Contact Form displays the message, “Thanks for visiting Fiesta Movement.”

The website also displays this disclaimer at the bottom of each page:

“All the information provided on the FiestaMovement.Com website is for Educational Purposes only. We are not affiliated with any of the brands. All the trademarks and copyrights belong to the respective owners.”

<usfordbenefits.com>: The Domain Name <usfordbenefits.com> resolved in May and October 2021 to a website headed “USFORDBENEFITS” with a home page for “Myfordbenefits us login”.

The content was similar to that of the “MYFORDBENEFITS” page on the website associated with the Domain Name <fiestamovement.com>, explaining how to use the Complainant’s employee benefits portal at “www.myfordbenefits.com” and how to provide personal information (such as date of birth and partial Social Security Number) to register on that site or reset login credentials for the site. The website referred to “The official MyFordBenefits online Login portal”, to which it linked, and the last page included at the bottom an incomplete disclaimer: “This website is not associated with the MyFordBenefits [sic]”. But the website operator was not identified, and the website displayed screens from the Complainant’s “www.myfordbenefits.com” website, including the Complainant’s blue oval logo, heightening the appearance of affiliation with the Complainant. The website also included information about accessing the Complainant’s dealer portal and employee payroll accounts.

At the time of this Decision, the Domain Name <usfordbenefits.com> continues to resolve to a similar website. However, the website is now headed “USEMPLOYEEINFO” and the tagline encouraged site visitors as follows:

“If you are a Employee at Ford and looking for MyFordBenefits than [sic] you are at right place. Here you can find all the benefits and the account login.”

<myfordbenefits.net>: The Panel notes that the Wayback Machine includes archived screenshot from 2018 showing that the Domain Name <myfordbenefits.net> was formerly used for a website describing the Complainant’s employee benefits portal at “www.myfordbenefits.com”. The website content was similar in this respect to that associated with the Domain Names described above but less extensive. It also furnished a link to the Complainant’s employee benefits portal and instructions for registering on the portal and resetting the login credentials on the portal. As with the other Domain Names, the website operator was not identified.

At the time of this Decision, the Domain Name <myfordbenefits.net> resolves to a parking page with pay-per-click (“PPC”) third-party advertising links, mostly relating to retirement plans and other employee benefits.

<myfordbenefits.bid>, <myfordbenefits.org>, <myfordbenefits.biz>: These three Domain Names were all registered on the same day in March 2021. Archived screenshots show that by May 2021 the Domain Name <myfordbenefits.biz> resolved to a website headed “MyFordBenefits Login Retiress [sic] at MyFordBenefits.com”, with content similar to the websites described above, including information about the Complainant’s employee portal and a link to that portal, photos of the Complainant’s vehicles and displays of the Complainant’s trademarked blue oval logo, and encouragement to link to the Complainant’s portal and supply login credentials. The website also included pay-per-click (“PPC”) links to third-party advertisers of fashion accessories.

At the same time in May 2021, the Domain Names <myfordbenefits.bid> and <myfordbenefits.org> resolved only to Bengali-language news websites. By October 2021, however, the websites associated with those Domain Names had changed. In each case, the Domain Name resolved to a website similar to those described above related to the other Domain Names, with detailed instructions for using the Complainant’s employee benefits portal and links to that portal, as well as information about other portals operated by the Complainant. These websites also included PPC advertising links to third parties. They included a message under the headers reading “Official Login Portal at www.myfordbenefits.com” and “Official MyFordBenefits Login Portal For Employees”, and an incomplete disclaimer in the footer, “This website is not associated with the MyFordBenefits [sic]”. This is identical to the apparently incomplete disclaimer found on the website associated with the Domain Name <usfordbenefits.com>. There was also a contact form encouraging site visitors to submit messages with their name and email address. The “About Us” page describes the Complainant and does not identify the actual operator of the website.

At the time of this Decision, the Domain Names <myfordbenefits.bid> and <myfordbenefits.org> continue to resolve to a similar website. The Domain Name <myfordbenefits.biz> redirects to a website at “www.myfordbenefits.us” with similar content.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that each of the Domain Names incorporates either its FORD or FIESTA registered trademarks, which the Respondents have no permission to use and in which they have no evident rights or legitimate interests. To the contrary, the Respondents have employed the Domain Names for websites with similar content imitating the Complainant’s employee portal:

“That website appears to be an official, Ford website, but is not. In a common variant, ‘MyFordBenefits’ is displayed at the top of the homepage with a subtitle such as ‘Official MyFordBenefits Login Portal for Employees’ […], indicating to visitors that the website is operated by Ford. Underneath that header, hyperlinks to other webpages, labeled, e.g., ‘Login,’ ‘Benefits,’ ‘MyFordPay,’ ‘About Us,’ and ‘Contact Us,’ appear in a solid black horizontal bar. Ford’s FORD BLUE OVAL design trademark is prominently displayed below. The body of the homepage displays information about Ford and Ford’s official myfordbenefits.com website and portal, as well as screenshots from myfordbenefits.com in which Ford’s FORD BLUE OVAL design trademark is plainly visible. Headings on the website refer to Ford and are worded to convey that Ford is the website operator, including headings labeled ‘MyFordBenefits,’ ‘MyFordBenefits Registration Process,’ and ‘New User Sign Up Steps.’ Based on the text, visitors will assume the website is operated either by Ford or an agent of Ford.”

The use of the Complainant’s marks to create imitative websites and mislead users as to source or affiliation, without identifying the website operator, cannot be considered a legitimate interest.

The commonalities in the content of the websites associated with the Domain Names “strongly indicate that the domain names are under common ownership or control”. The website associated with the Domain Name <fiestamovement.com> differs in that there is content relating to other companies on the same website, but the page labelled “MYFORDBENEFITS” is similar to the websites associated with the other Domain Names and has evidently attracted employees or retirees of the Complainant under the impression that it is affiliated with the Complainant, based on comments posted on the page.

The Complainant argues for a finding of bad faith given the Respondents’ wholesale copying of the Complainant’s trademarks and copyrighted photos of vehicles and their efforts to engender confusion with imitative websites as well as confusingly similar Domain Names.

B. Respondents

After receiving notice of the Complaint in this proceeding, Srinu Ipathy, from the email address of the registrant of the Domain Name <fiestamovement.com>, sent an email to the Center asking “Hey, What is this about and why did you add my domain name fiestamovement.com?”

Similarly, Usama Norat, listed as the registrant of the Domain Name <usfordbenefits.com>, emailed the Center to ask, “Can I know why my email id [sic] under attached of this mail. And what’s going on about domain name?”

On February 8, 2022, Srinu Ipathy emailed the Center again with the following message:

“The Fiestamovement.com that you mentioned In [sic] the complaint doesn’t infringe any of the FORD trademarks. You have mentioned that address provided is not correct which is false. The domain is owned by IPATHY VENKATA RAO.

If you have any problem with content we have on our domain then please let us know the URLs. We will be happy to delete them.

Mentioning my domain name in this complaint is baseless. Please remove my domain name.”

On February 14, 2022, Srinu Ipathy sent the Center another email, saying, “I have received an email from you guys. May I know the URLs of the content is infringing any content? I will be happy to comply with any laws”.

Srinu Ipathy sent a second email on that date, making the following statements:

“According to the FIESTA trademark filing, their main Goods and Services is: Land motor vehicles, namely, passenger cars

Even though my domain name consists the word FIESTA, we don’t mean to engage in the same business.

Our website focuses on simple HOW-TO-GUIDES related to Windows and other topics. Which is purely for educational purposes.

FIESTA is a common Spanish word.

We don’t have any intentions to neither misrepresent the trademark owners nor use it for the same purposes.

I believe that we don’t infringe any copyrights as the word FIESTA is a common word and also we don’t fall under the same category as the FIESTA Trademark Category.

Please pass this information to the panel.

I have purchased the domain in GoDaddy auctions. I spent lot of time and effort to create the content of the website.”

The Respondent Ipathy Venkata Rao did not submit a Response with a certification of accuracy and completeness as required by Rule 5(c)(viii). Srinu Ipathy refers to Ipathy Venkata Rao as the “owner” of the Domain Name <fiestamovement.com> and does not explain their relationship or Srinu Ipathy’s authority to speak for Ipathy Venkata Rao. The Panel must take all this into account in weighing the credibility of the communications from Srinu Ipathy.

Mr. Norat made no further communications regarding the Domain Name <usfordbenefits.com> after his initial inquiry to the Center. The other two Respondents, Ms. Randall and “Tranfer Broker” [sic], never replied to communications from the Center concerning the other four Domain Names at issue in this proceeding.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:

(i) the 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 domain name has been registered and is being used in bad faith.

Under paragraph 15(a) of the Rules, “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

6.1 Preliminary Matter: Consolidation and Multiple Respondents

The Rules, paragraph 3(c), provide that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder”. Panels have also consolidated proceedings where they found that multiple domain names appeared to be under common control, consolidation would be equitable for all parties, and consolidation would be in the interest of procedural efficiency. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2.

As summarized above, the six Domain Names were evidently registered (or in one case acquired) between 2017 and 2021. They have all been used for websites wholly or partially devoted to content about the Complainant’s online employee benefits portal; most have also displayed PPC advertising links or more detailed reviews or advertising about third-party promotions. None of them identify the website operator. Some of the same text is repeated from one site to another. The three most recently registered Domain Names were registered on the same day in 2021 in the name of a person who is ostensibly a resident of the United States, but they were all ultimately used for websites similar to those associated with the older Domain Names, after two of the newer Domain Names resolved briefly to Bengali news sites.

The use of the Domain Names suggests common control or coordination. The communications from Mr. Ipathy and Mr. Norat do not substantively address this issue, and none of the named Respondents submitted a formal Response to the Complaint.

The Panel finds that (a) the Domain Names are likely under common control, (b) consolidation would be equitable to all parties, and (c) consolidation is in the interest of procedural efficiency.

6.2 Substantive Issues

A. Identical or Confusingly Similar

The first element of a UDRP complaint “functions primarily as a standing requirement” and entails a “straightforward comparison between the complainant’s trademark and the disputed domain name”. See WIPO Overview 3.0, section 1.7. The Domain Names all incorporate in their entirety either the Complainant’s registered FORD or FIESTA trademarks. As usual, the Top-Level Domains (“TLDs”) “.com”, “.net”, “.bid”, “.biz”, and “.org” are disregarded as a standard registration requirement. See id. section 1.11.1.

The Panel finds, therefore, that the Domain Names are all confusingly similar to the Complainant’s registered marks for purposes of the Policy, paragraph 4(a)(i) and concludes that the Complainant has established the first element of the Complaint.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which a respondent may establish rights or legitimate interests in a 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 domain name or a name corresponding to the domain name in connection with bona fide offering of goods or services; or

(ii) that the respondent has been commonly known by the 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 domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Because a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1.

The Complainant has established trademark rights, a lack of permissive use, and the Respondents’ use of the Domain Names for imitative websites and third-party advertising. Thus, the Complainant has made a prima facie case, and the burden of production shifts to the Respondent.

Srinu Ipathy asserted in emails to the Center that the website associated with the Domain Name <fiestamovement.com> is meant to be educational. This argument might be advanced for the similar content concerning the Complainant’s employee portal that has been published on websites associated with all of the other Domain Names as well. The argument for “legitimate noncommercial or fair use” is undercut in each instance, however, by the facts that the Respondents’ websites do not identify the operator and include marks, photos, and misleading or ambiguous text heightening the confusion as to source that begins with the Domain Names themselves. This conclusion is reinforced by the comments posted by persons who appear to be employees or former employees of the Complainant seeking detailed information about their retirement or insurance accounts, which they seem to believe the Respondents will be able to help them obtain. The Respondents’ websites either lack disclaimers entirely or include partial disclaimers that are often not displayed on the relevant pages. Moreover, the Respondents’ websites display or link to third-party advertising, surveys, promotions, and reviews of other commercial products. This does not qualify as “legitimate noncommercial or fair use” of Domain Names incorporating the Complainant’s trademarks. See WIPO Overview 3.0, sections 2.5, 2.5.2, 2.5.3.

The Panel finds that the Respondents have not met the burden of production and concludes that the Complainant prevails on the second element of the Complaint.

C. Registered and Used in Bad Faith

The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name):

“(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 web site or location or of a product or service on your web site or location.”

This example of bad faith clearly applies to the extent that the Domain Names have been used for PPC advertising, third-party product reviews, and consumer surveys by third parties offering promotional incentives.

Moreover, to the extent that the Respondents’ websites are meant to be instructional concerning the Complainant’s employee benefits programs and online portal, they are also misleading in that they are presented as a way to start using the portal or recover login credentials for the portal. They engender confusion as to source or affiliation and falsely suggest an association with the Complainant, leading some individuals to post questions about their own employee benefits. Disclaimers of affiliation are absent, incomplete, or misplaced. None of the Respondents’ websites identify the actual site operator, while the frequent appearance of the Complainant’s marks, photos copied from the Complainant’s websites, and links to the Complainant’s websites add to the false impression of association with the Complainant.

The Panel considers that such a pattern of producing imitative websites while concealing the identity of the site operator is sufficient to indicate bad faith. Mr. Ipathy claims only to be offering “how to” guides for the Complainant’s sites, but this does not account for the efforts to make the Respondents’ websites appear to be associated with the Complainant and to obscure the identity of the website operator. In addition to attracting visitors for third-party advertising and other unrelated commercial uses, the imitative websites are suspect as platforms for phishing attacks. The Respondents’ websites in this case emphasize step-by-step instructions for users to link to the Complainant’s employee portals and register or recover their login credentials, with personal details such as name, birthdate, and partial Social Security Number. Users could be tracked from the Respondents’ websites to capture this information, posing a threat both to the users and to the Complainant.

The Panel finds that all six Domain Names were registered and used in bad faith within the meaning of the Policy and concludes that the Complainant has established the third element of the Complaint.

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 Names, <fiestamovement.com>, <myfordbenefits.bid>, <myfordbenefits.biz>, <myfordbenefits.net>, <myfordbenefits.org>, and <usfordbenefits.com>, be transferred to the Complainant.

W. Scott Blackmer
Sole Panelist
Date: March 30, 2022