The Complainant is Ford Motor Company of Dearborn, Michigan, United States of America, represented by Phillips, Ryther & Winchester, United States of America.
The Respondent is Domain Admin, Whois Privacy Corp. of Nassau, New Providence, Bahamas.
The disputed domain name <fordperformanceparts.com> is registered with TLD Registrar Solutions Ltd. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 14, 2015. On December 15, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 29, 2015, 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 January 4, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 24, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 25, 2016.
The Center appointed Jane Lambert as the sole panelist in this matter on January 27, 2016. 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 is one of the world’s leading motor manufacturers. It makes and sells vehicles of all kinds including high performance motor cars and components. It has registered the surname of its founder Henry Ford as a trade mark simpliciter and/or in combination with other words for a wide range of goods and services in the USA and throughout the world. Those registrations include the late Henry Ford’s signature mark which was registered with the US Patent and Trademark Office for “automobiles and their parts” on July 20,1909 under registration number 74,530. The Complainant has affixed that mark to an enormous number of cars, vans, lorries and other vehicles and their parts over the years.
The Complainant affirms that it has not authorized the Respondent to register the disputed domain name. The registration came to the Complainant’s notice in 2015 when it found that the disputed domain name had been used for a web page advertising pest control services. Later it was used to disseminate harmful software. The Complainant and its lawyers have written to the Respondent several times but have received no reply.
The Complainant requests the transfer of the disputed domain name on the grounds that it is confusingly similar to a trade mark in which the Complainant has rights, the Respondent has no rights or legitimate interests in respect of the disputed domain name and that the Respondent has registered and is using the disputed domain name in bad faith.
As to the first ground, the Complainant relies on the trade mark registration mentioned above and also on its advertising and sales of parts for high performance cars and car parts over the years. It submits evidence with the Complaint of a logo consisting of the signature mark and the words “ford performance” that appeared in its advertisements before the registration of the disputed domain name. By reason of such advertising the Complainant contends that it has acquired a considerable reputation and goodwill in FORD and the words “performance parts” in relation to high performance vehicles and their parts in the USA and other countries around the world. The Complainant also refers to several decisions of domain name panelists that support its contention, such as Ford Motor Co. v. Michelle Dinoia, WIPO Case No. D2007-0662.
As regards the second ground, the Complainant repeats that it has not authorized the Respondent to use its trade marks in any way. It adds that the Respondent has no connection or affiliation with the Complainant and has never made any bona fide use of the disputed domain name.
As to the third ground the Complainant says that the mere registration of a domain name containing such a well-known mark as FORD is an act of bad faith in itself. Again, it relies on a decision to support its contention. It also submits that it is bad faith to use a well-known trade mark to advertise goods and services unrelated to the domain name and again refers, inter alia, to Ford Motor Co. v. Michelle Dinoia, supra. Next, it adds that it is bad faith to use the disputed domain name to advertise the services of another company and certainly to distribute malicious software. Referring to Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 the Complainant argues that merely possessing a domain name that incorporates a well-known trade mark raises a presumption of bad faith which it is up to the Respondent to rebut. It concludes that “any of these circumstances, whether alone or in combination, is sufficient to justify a finding that the Respondent has acted in bad faith”.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 4(a) of the Policy requires the Respondent to submit to a mandatory administrative proceeding in the event that the Complainant asserts that:
(i) The disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The 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.
In the administrative proceeding, the complainant must prove that each of those three elements is present.
The Panel finds that the first element is present.
The disputed domain name incorporates the mark FORD which the Complainant has registered in the USA under registration number 74,530 for automobiles (which must include high performance motor cars) and their parts. The mark is combined with the words “performance” and “parts”, which are included in the specification for which the mark is registered. It is hard to think of a better example of a domain name that is confusingly similar to a trade mark.
The Panel is satisfied that the second element is present.
The Complainant states that:
(1) It has not authorized the Respondent to use its trade marks in any way; and that
(2) The Respondent has no connection or affiliation with the Complainant.
That raises a presumption that the Respondent has no right or legitimate interest that it is up to the Respondent to rebut. The Respondent has failed to offer any evidence or make any submissions whatsoever. Consequently, the presumption has not been rebutted.
The Panel holds the third element to be present.
Paragraph 4(b) of the Policy sets out a number of circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. These include:
“(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.”
The Respondent has used the disputed domain name for a web page to, inter alia, advertise pest control services. In the absence of any explanation from the Respondent it must be assumed that the obvious purpose of that web page was to attract customers for the Western Exterminator Company’s pest control business. Had the Respondent used a domain name that included the words “western”, “exterminator” and “company” it is unlikely that it would have attracted anything like the number of visitors looking for parts for the Complainant’s high performance motor vehicles. It follows that the Respondent has attempted intentionally to attract Internet users to its website for commercial gain.
The Panel has already found the disputed domain name to be confusingly similar to a trade mark in which the Complainant has rights. Thus, the requirement of a likelihood of confusion with the Complainant’s mark has been satisfied.
There is therefore evidence of registration and use in bad faith.
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, <fordperformanceparts.com>, be transferred to the Complainant.
Jane Lambert
Sole Panelist
Date: February 7, 2016