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 Domain Admin, Whois Privacy Corp. of Nassau, New Providence, Bahamas / PPA Media Services / Ryan Foo of Santiago, Chile.
The disputed domain names <magarinoford.com>, <myfordvehicle.com> and <myfordvehicles.com> are registered with Internet Domain Service BS Corp (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 19, 2016. On December 20, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 28, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 28, 2016 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 December 29, 2016.
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 6, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 26, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 27, 2017.
The Center appointed Edoardo Fano as the sole panelist in this matter on February 6, 2017. 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 Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties.
Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), “to employ reasonably available means calculated to achieve actual notice to Respondent”. Therefore, the Panel shall issue its Decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of a response from the Respondent.
The language of the proceeding is English, being the language of the Registration Agreement, as per paragraph 11(a) of the Rules.
The Complainant is Ford Motor Company, a leader in the automotive industry, owning many trademark registrations in the United States and worldwide for FORD, including:
- United States Trademark Registration No. 74530 FORD, registered on July 20, 1909;
- United States Trademark Registration No. 643185 FORD, registered on March 26, 1957.
Magarino Ford is an authorized dealer of the Complainant, located in Sussex, New Jersey, and operating on the Internet at the website “www.magarino.com”.
The Complainant provided evidence in support of the above.
The disputed domain names <myfordvehicle.com>, <myfordvehicles.com> and <magarinoford.com> were respectively registered on November 9, 2005, November 13, 2005 and September 1, 2007. At the time of filing the Complaint, the websites at the disputed domain names all resolved to webpages providing pay-per-click links, information and sales of new and used cars of the Complainant’s trademark as well as of the Complainant’s competitors’ trademarks.
The Complainant states that the disputed domain names <myfordvehicle.com>, <myfordvehicles.com> and <magarinoford.com> are confusingly similar to its trademark FORD.
Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain names since it has not been authorized by the Complainant to register the disputed domain names or to use its trademark within the disputed domain names, nor is the Respondent commonly known by the disputed domain names.
The Complainant submits that the Respondent has registered and is using the disputed domain names in bad faith because they all resolve to websites with pay-per-click links mainly related to the automotive industry and also referring to the Complainant’s competitors.
Moreover, the Respondent is engaged in a pattern of registering many abusive domain name registrations.
The Respondent has made no reply to the Complainant’s contentions and is in default. In reference to paragraphs 5(e) and 14 of the Rules, no exceptional circumstances explaining the default have been put forward or are apparent from the record.
A respondent is not obliged to participate in a proceeding under the Policy, but if it fails to do so, reasonable facts asserted by a complainant may be taken as true, and appropriate inferences, in accordance with paragraph 14(b) of the Rules, may be drawn (see, e.g., Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441; Microsoft Corporation v. Freak Films Oy, WIPO Case No. D2003-0109; SSL INTERNATIONAL PLC v. MARK FREEMAN, WIPO Case No. D2000-1080; ALTAVISTA COMPANY v. GRANDTOTAL FINANCES LIMITED et. al., WIPO Case No. D2000-0848; Confédération Nationale du Crédit Mutuel, Caisse Fédérale du Crédit Mutuel Nord Europe v. Marketing Total S.A., WIPO Case No. D2007-0288).
The Panel finds that the Complainant is the owner of the trademark FORD both by registration and acquired reputation and that the disputed domain names <myfordvehicle.com>, <myfordvehicles.com> and <magarinoford.com> are confusingly similar to the trademark FORD.
Regarding the addition of the dictionary words “my” and “vehicle(s)”, the Panel notes that it is now well established that the addition of dictionary terms to a domain name does not necessarily distinguish the domain name from a trademark (see, e.g., Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti, WIPO Case No. D2005-0037; Red Bull GmbH v. Chai Larbthanasub, WIPO Case No. D2003-0709; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713), while the word “magarino” is the name of one of the Complainant’s authorized dealers. The addition of the words “my”, “vehicle(s)” and “magarino” do not therefore prevent the disputed domain names from being confusingly similar to the Complainant’s trademark.
It is also well accepted that a generic Top-Level Domain (“gTLD”) suffix, in this case “.com”, may be ignored when assessing the similarity between a trademark and a domain name (see, e.g., VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607).
The Panel finds that the Complainant has therefore met its burden of proving that the disputed domain names are confusingly similar to the Complainant’s trademark, pursuant to the Policy, paragraph 4(a)(i).
The Respondent has failed to file a response in accordance with the Rules, paragraph 5.
The Complainant in its Complaint and as set out above has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. It asserts that the Respondent is not using the disputed domain names for a legitimate noncommercial or fair use or in connection with a bona fide offering of goods or services.
The prima facie case presented by the Complainant is enough to shift the burden of production to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain names. However, the Respondent has not presented any evidence of any rights or legitimate interests it may have in the disputed domain names, and the Panel is unable to establish any such interests on the basis of the evidence in front of it.
The Panel therefore finds that paragraph 4(a)(ii) of the Policy has been satisfied.
Paragraph 4(b) of the Policy provides that “for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that [the respondent has] registered or 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 the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) that [the respondent 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 respondent has] engaged in a pattern of such conduct; or
(iii) that [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’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 respondent’s] website or location or of a product or service on [the respondent’s] website or location.”
Regarding the registration in bad faith of the disputed domain names, the reputation of the Complainant’s trademark FORD in the field of the automotive industry is clearly established and the Panel finds that the Respondent likely knew of the Complainant and deliberately registered the disputed domain names, <myfordvehicle.com>, <myfordvehicles.com> and <magarinoford.com>, because they are confusingly similar to the Complainant’s trademark.
The Panel further notes that, the disputed domain names are also used in bad faith since in the relevant websites there are pay-per-click links mainly referring to the automotive industry (including competitors of the Complainant) and the Respondent is therefore knowingly taking advantage from user confusion.
The above suggests to the Panel that the Respondent intentionally registered and is using the disputed domain names in order to attract, for commercial gain, Internet users to its websites in accordance with paragraph 4(b)(iv) of the Policy.
The Panel finds that the Complainant has presented evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has registered and is using the disputed domain names in bad faith.
The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been satisfied.
For all 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 <myfordvehicle.com>, <myfordvehicles.com> and <magarinoford.com> be transferred to the Complainant.
Edoardo Fano
Sole Panelist
Date: February 20, 2017