NATIONAL ARBITRATION FORUM

 

DECISION

 

Ford Motor Company and Ford Motor Credit Company v. Florida Auto Solutions

Claim Number: FA0806001212882

 

PARTIES

Complainants are Ford Motor Company and Ford Motor Credit Company, (“Complainants”) represented by Hope V. Shovein, of Brooks Kushman P.C., Michigan, USA.  Respondent is Florida Auto Solutions (“Respondent”), Florida, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <ford-credit.us>, registered with Godaddy.com, Inc.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

Honorable Karl V. Fink (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on June 26, 2008; the Forum received a hard copy of the Complaint on June 30, 2008.

 

On June 27, 2008, Godaddy.com, Inc. confirmed by e-mail to the Forum that the <ford-credit.us> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name.  Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).

 

On July 8, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 28, 2008 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).

 

Having received no Response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.

 

On August 1, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules.  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.  

 

PARTIES’ CONTENTIONS

A. Complainant

 

1.      Respondent’s <ford-credit.us> domain name is confusingly similar to Complainant’s FORD CREDIT mark.

 

2.      Respondent does not have any rights or legitimate interests in the <ford-credit.us> domain name.

 

3.      Respondent registered and used the <ford-credit.us> domain name in bad faith.

 

B. Respondent failed to submit a Response in this proceeding. 

 

FINDINGS

Complainant Ford Motor Company first began selling automobiles under the FORD mark as early as 1903.  Complainant Ford Motor Credit Company has been assisting in the financing of vehicles for more than 50 million customers of Ford Motor Company since roughly 1959.  Currently, Complainant Ford Motor Company manages approximately US $149 billion in receivables.  Complainants own a registration for the FORD CREDIT mark through the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,598,583 issued July 23, 2002) for the financing of motor vehicle leasing, motor vehicle sales, credit cards services and insurance. 

 

The <ford-credit.us> domain name was registered on April 3, 2007.  It currently resolves to a website utilizing Complainants’ FORD CREDIT mark and a banner stating “Welcome to Ford-Credit Link online.”  It then states that the Internet user has been “pre-approved through our exclusive program available only at the authorized Dealer listed on the mailer or internet notification you received recently.”  Direct mail advertisements have been sent through the post to current and potential customers of Complainants utilizing Complainants’ mark and indicating that a “National Lending Source” is offering financial services in association with Complainants.  The direct mail advertisements lead individuals to the disputed domain name. 

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

 

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to Paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to Paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

 

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered or is being used in bad faith.

 

Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

 

Identical and/or Confusingly Similar

 

The Panel finds that Complainants have sufficiently established rights in the FORD CREDIT mark through registration with the USPTO pursuant to Policy ¶ 4(a)(i).  See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also U.S. Office of Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum Dec. 9, 2003) (“[O]nce the USPTO has made a determination that a mark is registrable, by so issuing a registration, as indeed was the case here, an ICANN panel is not empowered to nor should it disturb that determination.”).

 

The <ford-credit.us> domain name contains the country-code top-level domain (“ccTLD”) “.us,” which is insufficient to adequately distinguish the disputed domain name.  See Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that the addition of the country-code “.us” fails to add any distinguishing characteristic to a disputed domain name); see also Lifetouch, Inc. v. Fox Photographics, FA 414667 (Nat. Arb. Forum Mar. 21, 2005) (finding the respondent’s <lifetouch.us> domain name to be identical to the complainant’s LIFETOUCH mark because “[t]he addition of “.us” to a mark fails to distinguish the domain name from the mark pursuant to the Policy”).  Moreover, the disputed domain name adds a hyphen between the words “FORD” and “CREDIT” in Complainants’ mark.  The addition of a hyphen fails to differentiate a mark from a disputed domain name.  See Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Apr. 12, 2007) (finding that the addition of a hyphen between terms of a registered mark did not differentiate the <p-zero.org> domain name from the P ZERO mark under UDRP Policy ¶ 4(a)(i)); see also Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a [UDRP] Policy ¶ 4(a)(i) confusingly similar analysis.”).  Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainants’ mark pursuant to Policy ¶ 4(a)(i). 

 

The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i). 

 

Rights or Legitimate Interests

 

Under Policy ¶ 4(a)(ii), Complainants must first establish a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name.  The Panel finds that Complainant has met this burden and that it is accordingly shifted to Respondent to demonstrate that it does have rights or legitimate interests in the disputed domain name.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also Document Techs., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000) (“Although Paragraph 4(a) of the [UDRP] Policy requires that the Complainant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.”).

 

However, Respondent has failed to reply to the Complaint.  Therefore, the Panel may presume that Respondent lacks rights and legitimate interests in the disputed domain name.  The Panel will nonetheless continue to examine the record in consideration of the elements listed under Policy ¶ 4(c).  See Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name.  It also allows the Panel to accept all reasonable allegations set forth…as true.”); see also Euromarket Designs, Inc. v. Domain For Sale VMI, D2000-1195 (WIPO Oct. 26, 2000) (“In the absence of direct evidence, the complainant and the panel must resort to reasonable inferences from whatever evidence is in the record.  In addition . . . Paragraph 14(b) of the [UDRP] Rules [authorizes] a panel to draw such inferences from respondent’s failure to respond ‘as it considers appropriate.’”).

 

Respondent has provided no evidence that it ever was or is the owner or beneficiary of any trademarks reflected in the disputed domain name.  Accordingly, the Panel finds that Respondent does not own any trademarks or services marks sufficient for establishing rights under Policy ¶ 4(c)(i).  See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that Respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.com> domain name)

Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because Respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).

 

Furthermore, Respondent appears to use Complainants’ mark without permission or license from Complainant to do so.  Additionally, there is nothing in the record, including the WHOIS information, which indicates that Respondent is or ever was commonly known by the disputed domain name.  Without any additional information, the Panel finds that Respondent is not commonly known by the <ford-credit.us> domain name pursuant to Policy ¶ 4(c)(iii).  See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name); see also Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument). 

 

The <ford-credit.us> domain name resolves to a website utilizing Complainants’ mark and purports to offer financial services in direct competition with those offered under Complainants’ FORD CREDIT mark.  The Panel finds that this is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iv).  See Am. Int’l Group, Inc. v. Benjamin, FA 944242 (Nat. Arb. Forum May 11, 2007) (finding that the respondent’s use of a confusingly similar domain name to advertise real estate services which competed with the complainant’s business did not constitute a bona fide offering of goods or services under UDRP Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under UDRP Policy ¶ 4(c)(iii)); see also Or. State Bar v. A Special Day, Inc., FA 99657 (Nat. Arb. Forum Dec. 4, 2001) (“Respondent's advertising of legal services and sale of law-related books under Complainant's name is not a bona fide offering of goods and services because Respondent is using a mark confusingly similar to the Complainant's to sell competing goods.”).

 

The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii). 

 

 

Registration or Use in Bad Faith

 

The disputed domain name resolves to a website offering direct competing financial services.  The Panel finds that that is sufficient evidence to establish Respondent’s bad faith registration or use of the <ford-credit.us> domain name pursuant to Policy  ¶ 4(b)(iii).  See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business.  The Panel finds this diversion is evidence of bad faith registration and use pursuant to [UDRP] Policy ¶ 4(b)(iii).”); see also Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to Complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under UDRP Policy ¶ 4(b)(iii)).

 

Moreover, this competing website displays the FORD CREDIT mark and gives the appearance of being affiliated with or approved by Complainants.  Likewise, the associated direct mail advertisements directed their receivers to go to the disputed domain name, which further indicates that Respondent is either offering or attempting to offer financial services that compete with Complainants.  Furthermore, the use of Complainants’ mark gives rise to the impression that the disputed domain name is associated with Complainants.  As a consequence, the Panel considers this to be further evidence that Respondent registered or is using the <ford-credit.us> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).  See Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding bad faith pursuant to UDRP Policy ¶ 4(b)(iv) because the respondent and the complainant were in the same line of business and the respondent was using a domain name confusingly similar to the complainant’s FITNESS WAREHOUSE mark to attract Internet users to its <efitnesswarehouse.com> domain name); see also World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (concluding that the respondent registered and used the <wwfauction.com> domain name in bad faith because the name resolved to a commercial website that the complainant’s customers were likely to confuse with the source of the complainant’s products, especially because of the respondent’s prominent use of the complainant’s logo on the site).

 

Additionally, the Panel considers Respondent’s use of Complainants’ mark on the website that resolves from the disputed domain name and the use of the mark on the direct mail advertisements asserted to be related to the disputed domain name to be further evidence of Respondent’s bad faith registration or use under Policy ¶ 4(a)(iii).  See DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”).

 

The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(iii). 

 

DECISION

Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <ford-credit.us> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Honorable Karl V. Fink (Ret.), Panelist

Dated: August 8, 2008

 

 

 

 

 

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